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 .
This Office Action is in response to the amendments dated June 6, 2026.
Claims 1-4, 9, 11, 13, and 19 are pending.
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:
“mechanism for articulating an instrument” in Claim 13.
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.
More specifically:
the claimed “mechanism for articulating an instrument” in Claim 13 is interpreted as elevator 166 shown in FIG. 2 of the present patent application.
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 § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, “the target site” in line 11 has no antecedent basis in the claims. Furthermore, the specification does not provide a special/specific definition of a target site, so the term is unclear. For purposes of examination, Examiner interprets a “target site” as a site within a patient whose image is captured by a camera that utilizes a lens.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, “the visualization section” in lines 2-3 has no antecedent basis in the claims. For purposes of examination, Examiner interprets “the visualization section” as a section of the coupler device, as described in paragraph [0096] of the present patent application.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, “the second optical component” in line 2 has no antecedent basis in the claims. For purposes of examination, Examiner interprets “the second optical component” as the optical component introduced in line 1.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The present rejection(s) reference specific passages from cited prior art. However, Applicant is advised that the rejections are based on the entirety of each cited prior art. That is, each cited prior art reference “must be considered in its entirety”. Therefore, Applicant is advised to review all portions of the cited prior art if traversing a rejection based on the cited prior art.
Claims 1, 9, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miller (US PGPUB 2018/0206708 – “Miller”).
Regarding Claim 1, Miller discloses:
A coupler device (Miller Fig. 2A, coupler device 10) for an endoscope (Examiner-annotated Miller FIG. 2A shown below, duodenum scope 40) having a light (Miller FIG. 2A, light guide 44) and a camera lens (Miller FIG. 2A, lens 46), the coupler device comprising:
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a main body (Miller FIG. 1A, main body 12) comprising an at least partially closed distal end (Miller FIG. 1A, distal end 16) and a proximal end (Miller FIG. 1A, proximal end 14) configured for attachment to a distal end portion of the endoscope (Miller FIG. 1A, proximal end of coupler device 10 attached to distal end of duodenum scope 40), the main body (Miller FIG. 1A, main body 20) comprising a surface substantially surrounding the distal end portion of the endoscope when the proximal end is attached to the said distal end portion (Miller FIG. 1A, showing the proximal end of the main body 20 of coupler device 10 surrounding the distal end portion of the scope 40); and
wherein the surface of the main body (Miller FIG. 2A, main body 12 introduced in Miller FIG. 1A) comprises an open area (Miller FIG. 2A, open area; see also Miller FIG. 1B) aligned between the light and the camera lens (Miller FIG. 2A, showing open area between light guide 44 and lens 46) of the endoscope and the target site (see Miller paragraph [0047], which describes the camera being used to capture an image within an insufflated gastrointestinal tract) when the proximal end is attached to the distal end of the endoscope.
Regarding Claim 9, Miller discloses the features of Claim 1, as described above.
Miller further discloses wherein the main body comprises a substantially transparent material disposed within an interior of the main body (Miller FIG. 9, coupler device 10 having a main body 12 as shown in Miller FIG. 1A; Miller paragraph [0054], “coupler device 10 may be made of any biocompatible material, such as for example, silicone or another elastic or polymeric material. In addition, the material may be transparent. As shown in FIG. 9, the coupler device 10 may be formed of a transparent material to provide a transparent covering of the scope camera and light source, thereby allowing unhindered performance of the scope 40.”).
Regarding Claim 13, Miller in view of Nadeau and Goto teaches the features of Claim 1, as described above.
Miller further discloses a mechanism (Miller FIG. 10, actuating cable 54 connected to working channel extension 34) for articulating an instrument passing through a working channel on the endoscope (Miller paragraph [0049], “working channel extension 34 serves as an exit portal for instruments to pass through the scope 40 to reach different areas of the body”).
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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US PGPUB 2018/0206708 – “Miller”) in view of Nadeau, Jr. et al. (US Patent 6,549,794 – “Nadeau”).
Regarding Claim 2, Miller discloses the features of Claim 1, as described above.
Miller does not explicitly disclose an anti-reflective coating disposed on an inner surface of the visualization section.
Nadeau is analogous art in the field of optical systems that teaches an anti-reflective coating disposed on an inner surface of the visualization section (Nadeau FIG. 2, anti-reflective face portion 212 on interior of cap 130; see Nadeau col. 5, lines 14-15).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine Nadeau’s anti-reflective coated glass with Miller’s coupler/end cap. A person having ordinary skill in the art would be motivated to combine these prior art elements according to known methods to yield the predictable result of reduction of image glare formed on an imaging device in an endoscope distortion (see col. 4, lines 21-24 of Nadeau).
Regarding Claim 3, Miller discloses the features of Claim 1, as described above.
Miller does not explicitly disclose an optical layer configured to reduce a portion of the reflected light in a visible range of light waves.
Nadeau is analogous art in the field of optical systems that teaches an optical layer configured to reduce a portion of the reflected light in a visible range of light waves (Nadeau col. 4 lines 28-31, “Transmittance through optically transparent face portion 212 should be equal to or greater than ninety percent from 500 nanometers (nm) to 650 nm.”; thus no more than 10% of visible light in the green-red spectrum is reflected by face portion 212).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine Nadeau’s anti-reflective coated glass with Miller’s coupler/end cap. A person having ordinary skill in the art would be motivated to combine these prior art elements according to known methods to yield the predictable result of reduction of image glare formed on an imaging device in an endoscope distortion (see col. 4, lines 21-24 of Nadeau).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Miller (US PGPUB 2018/0206708 – “Miller”) in view of Nadeau, Jr. et al. (US Patent 6,549,794 – “Nadeau”) and Goto et al. (US PGPUB 2014/0275786 – “Goto”).
Regarding Claim 4, Miller in view of Nadeau teaches the features of Claim 2, as described above.
Miller in view of Nadeau does not explicitly teach wherein the anti-reflective coating comprises a magnesium fluoride coating.
Goto teaches is analogous art in the field of optical systems that wherein the anti-reflective coating comprises a magnesium fluoride coating (Goto FIG. 4, layer 32 over lens 31; Goto paragraph [0049], “in the image pickup optical unit 30, a solder-repellant layer 32, which is composed of magnesium fluoride as a transparent material, is formed into a film on a substantially entire face of an outer surface of the lens 31”; Note that paragraph [0096] of the present patent application admits that optical layers on a visualization section can be disposed on a camera lens.).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine Goto’s magnesium fluoride coating with the coupler device taught by Miller in view of Nadeau. A person having ordinary skill in the art would be motivated to combine these prior art elements according to known methods to yield the predictable result of a transparent outer optical coating that can be used with other materials (e.g., bonding member 33 shown in Goto FIG. 4) to protect a lens.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Miller (US PGPUB 2018/0206708 – “Miller”) in view of Hsu et al. (US PGPUB 2010/0174144 – “Hsu”).
Regarding Claim 11, Miller discloses the features of Claim 1, as described above.
Miller does not explicitly disclose an optical component on, or within, the visualization section, wherein the second optical component is configured to inhibit condensation of fluids on the visualization section.
Hsu is analogous art in the field of optical systems that teaches (Hsu FIG. 3, lens cover film; Hsu paragraph [0051], ”the lens cover film may be…coated…to achieve anti-fog capability. Surfactant, polymer, or corona treatment, for example, may provide a hydrophilic surface to the lens cover film that can provide anti-fog quality to the film.”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine Hsu’s anti-fogging coating with the coupler device disclosed by Miller. A person having ordinary skill in the art would be motivated to combine these prior art elements according to known methods to yield the predictable result of an endoscope device that produces images that are not distorted by fogging.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Miller (US PGPUB 2018/0206708 – “Miller”) in view of Ramanujam et al. (US PGPUB 2020/0315444 – “Ramanujam”).
Regarding Claim 19, Miller discloses the features of Claim 1, as described above.
Miller does not explicitly disclose a baffle on the coupler device, the baffle having one or more vanes configured to direct stray light away from the camera lens.
Ramanujam is analogous art in the field of optical systems that teaches a baffle on the coupler device, the baffle having one or more vanes configured to direct stray light away from the camera lens (Ramanujam FIG. 8A, light baffle 260 within end cap 130; Ramanujam paragraph [0092], ”light baffle 260 which acts as a physical entrance aperture with an opaque light absorbing coating to prevent image vignetting and eliminate environmental or stray illumination light”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine Ramanujam’s light baffle with the coupler device disclosed by Miller. A person having ordinary skill in the art would be motivated to combine these prior art elements according to known methods to yield the predictable result of an endoscope that prevents image vignetting (unwanted darkening of an image toward the periphery of the image).
Response to Arguments
Applicant’s arguments, see page 7, filed June 16, 2026, with respect to the rejection of Claim 3 under 35 U.S.C. 112(b) have been fully considered and are persuasive, in light of the amendment to Claim 3 that removed the term “substantial” when describing a portion. The rejection of Claim 3 under 35 U.S.C. 112(b) has been withdrawn.
However, new rejections under 35 U.S.C. 112(b) have been issued in the present Office Action against currently-amended Claims 1-2 and 11, as presented above.
Applicant's arguments, see pages 7-12, filed June 16, 2026, with respect to the rejection of Claims 1-4, 7, 9, and 13 under 35 U.S.C. 102/103 have been fully considered but they are not persuasive.
Specifically, on pages 7-11 Applicant asserts that Miller does not teach an open area aligned between the light and the camera lens of the endoscope. However, as discussed in the rejection of Claim 1 under 35 U.S.C. 102(a)(1) above, Miller (US PGPUB 2018/0206708) explicitly describes the claimed open area in Miller FIG. 1B and FIG. 2, which respectively match the features shown in FIG.3B and FIG. 4A of the present specification. Applicant’s assertion that other embodiments presented in Miller is not relevant to the embodiment disclosed by Miller FIG. 1B and FIG. 2.
As such, the rejection of Claim 1 under 35 U.S.C. 102(a)(1) is maintained. No arguments are presented against dependent Claims 2-4, 9, 11, and 13, whose rejections are further maintained under 35 U.S.C. 102/103.
On pages 11-12, Applicant further asserts that Hsu (US PGPUB 2010/0174144) does not teach an open area in the rejection of Claim 11. However, the rejection of Claim 11 under 35 U.S.C. 103 presented above does not rely on an additional teaching of an open area, which is already disclosed in the rejection of Claim 1.
Thus, the rejections of Claims 1-4, 9, 11, 13, and 19 under 35 U.S.C. 102/103 are maintained.
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 JIM BOICE whose telephone number is (571)272-6565. The examiner can normally be reached Monday-Friday 9:00am - 5:00pm Eastern.
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, Anhtuan Nguyen can be reached at (571)272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JIM BOICE
Examiner
Art Unit 3795
/JAMES EDWARD BOICE/Examiner, Art Unit 3795
/ANHTUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
08/03/26
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