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
The amendments to claim 1 in the response filed on 12/23/2025 are acknowledged.
Claims 1-8 remain pending in the application
Claims 1-8 are examined.
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
Applicant argues that Neither Henley nor Aizenberg teaches an apparatus designed to retain an anti-adhesive lubricant in contact with a lens or window of the endoscope during shipment.
The examiner respectfully disagrees. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the lubricant layer must be between the prism and the endoscope lens) are not recited in the rejected claim(s). The claim does not recite that the optical prism and connector are in direct contact with the lubricant. The claim only says that the lubricant must be in contact with a lens or window of the endoscope. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicant also argues that the prior art contains no teaching, suggestion, or motivation to combine Henley's optical prism system with Aizenberg's anti-fouling coatings. However, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Therefore, Henley in view of Aizenberg, does teach the limitation.
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) 1-3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2014/0275771 to Henley et al. (hereinafter “Henley”) in view of U.S. Publication No. 2019/0136070 to Aizenberg et al. (hereinafter “Aizenberg”).
Regarding claim 1, Henley discloses an apparatus, comprising: an optical prism designed to displace a field of view offset angle of an endoscope (140, Fig. 2, [0057]); a connector (130, Fig. 3, [0061]) designed to affix the optical prism to a tip of an endoscope (104, Fig. 3, [0056]) that has a field of view at an initial offset angle displaced off-axis of the endoscope (Fig. 3), and to retain the optical prism against displacement forces during insertion of the endoscope into a body cavity (Fig. 3) ;the optical prism and connector designed to reduce the offset angle of the field of view of the endoscope toward on-axis relative to the initial offset when the prism and connector are affixed to an optical tip of the endoscope (Fig. 3, [0059]); wherein the optical prism and connector are affixed to the endoscope (Fig. 3) for shipment (intended use).
Henley fails to expressly teach designed to retain an anti-adhesive lubricant in contact with a lens or window of the endoscope during shipment.
However, Aizenberg teaches of an apparatus (Aizenberg: Fig. 1D) designed to retain an anti-adhesive lubricant in contact with a lens or window of the endoscope during shipment (Aizenberg: [0054]).
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 Henley to retain an anti-adhesive lubricant in contact with a lens or window of the endoscope during shipment, as taught by Aizenberg. It would have been advantageous to make the combination for the purpose of repelling liquid ([0132] of Aizenberg).
Regarding claim 2, Henley, in view of Aizenberg, teaches the apparatus of claim 1, and Henley further discloses wherein the optical prism is designed to reduce the offset angle of the endoscope's field of view to no more than 100 (Henley: [0059]).
Regarding claim 3, Henley, in view of Aizenberg, teaches the apparatus of claim 2, and Henley further discloses wherein the optical prism is designed to reduce the offset angle of the endoscope's field of view to no more than 5o (Henley: [0059]).
Regarding claim 8, Henley, in view of Aizenberg, teaches the apparatus of claim 1.
Henley, in view of Aizenberg, fails to expressly teach wherein the endoscope has a wetting surface treated to form a porous solid wetting surface designed to entrain an anti-adhesive lubricant in a layer over a lens or window of the endoscope.
However, Aizenberg further teaches (Aizenberg: Fig. 1D) wherein the endoscope has a wetting surface treated to form a porous solid wetting surface designed to entrain an anti-adhesive lubricant in a layer over a lens or window of the endoscope (Aizenberg: [0054]).
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 Henley, in view of Aizenberg, so that the endoscope has a wetting surface treated to form a porous solid wetting surface designed to entrain an anti-adhesive lubricant in a layer over a lens or window of the endoscope, as taught by Aizenberg. It would have been advantageous to make the combination for the purpose of repelling liquid ([0132] of Aizenberg).
Claim(s) 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Henley, in view of Aizenberg, and further in view of U.S. Publication No. 2006/0276692 to Kucklick.
Regarding claim 4, Henley, in view of Aizenberg, teaches the apparatus of claim 1.
Henley, in view of Aizenberg, teaches the fails to expressly teach the optical prism is optically convex to magnify an image.
However, Kucklick teaches of an apparatus (Kucklick: Fig. 1) wherein the optical prism is optically convex to magnify an image (Kucklick: Fig. 6, [0027]).
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 Henley, in view of Aizenberg, so that the optical prism is optically convex to magnify an image, as taught by Kucklick. It would have been advantageous to make the combination for the purpose of providing a magnified view of an object within the surgical field (Kucklick: [0027]).
Regarding claim 5, Henley, in view of Aizenberg, teaches the apparatus of claim 1.
Henley, in view of Aizenberg, fails to expressly teach wherein the optical prism is optically concave to enlarge the endoscope's field of view.
However, Kucklick teaches of an apparatus (Kucklick: Fig. 1) wherein the optical prism is optically concave to enlarge the endoscope's field of view (Kucklick: Fig. 5, [0026]).
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 Henley, in view of Aizenberg, so that the optical prism is optically concave to enlarge the endoscope's field of view, as taught by Kucklick. It would have been advantageous to make the combination for the purpose of providing a wide-angle view of the surgical field ([0026] of Kucklick).
Regarding claim 6, Henley, in view of Aizenberg, teaches the apparatus of claim 1.
Henley, in view of Aizenberg, fails to expressly teach wherein the connector is designed to affix to the endoscope by mechanical forces.
However, Kucklick teaches of an apparatus (Kucklick: Fig. 1) wherein the connector is designed to affix to the endoscope by mechanical forces (Kucklick: [0025]).
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 Henley, in view of Aizenberg, so that the connector is designed to affix to the endoscope by mechanical forces, as taught by Kucklick. It would have been advantageous to make the combination for the purpose of holding the connector onto the endoscope (Kucklick: [0025])
Regarding claim 7, Henley, in view of Aizenberg, teaches the apparatus of claim 1.
Henley, in view of Aizenberg, fails to expressly teach further comprising: the connector is designed to affix an optical filter in series with the prism.
However, Kucklick teaches of an apparatus (Kucklick: Fig. 1) further comprising: the connector is designed to affix an optical filter in series with the prism (Kucklick: [0029]).
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 Henley, in view of Aizenberg, so that the connector is designed to affix an optical filter in series with the prism, as taught by Kucklick. It would have been advantageous to make the combination for the purpose of reducing the light reflected into the arthroscope or to block certain wavelengths of light (Kucklick: [0029]).
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 CHRISTEN A. SHARPLESS whose telephone number is (571)272-2387. The examiner can normally be reached Monday-Tuesday 6:00 AM - 2:00 PM, and Friday 6:00 AM - 10:00 AM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mike 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.
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/C.A.S./Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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