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 .
Acknowledgement of Amendment
The amendment filed 01/29/2026 has been entered. Claims 31-50 are currently pending in the application. Claims 1-30 are canceled.
Response to Arguments
Applicant’s arguments with respect to claims 31-50 have been considered but are moot because Applicant has canceled all claims within the non-final rejection 10/02/2025 and submitted newly added claims in response to the cited prior art of the non-final rejection dated 10/02/2025. Therefore, the previous rejections have been withdrawn. However upon further consideration, a new ground of rejection is made. Please see the rejection under section 35 U.S.C. §102 and 35 U.S.C. §103 below for further explanation.
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:
“catching feature” in claim 46 which has structural support in the specification at paragraph [0041] “As shown in FIG. 1, the tensioning device 100 optionally includes a pair of prongs 116 each on a respective opposing peripheral edges of the base 114. The base 114 may further include a catching feature 140 formed in the base 114 of the tensioning device 100 and preferably between the pair of prongs 116. The catching feature 140 may be created during initial stamping or forming process of the tensioning device 100, or it may be cut into and/or added as a protruding element later in the manufacturing process. In one aspect, the catching feature 140 is a cut out segment, an indent or a protrusion configured to facilitate the engagement of a tool, such as a pair of pliers, to grip the tensioning device 100 for removal from the endoscope 10. It should be appreciated that the catching feature 140 may be shaped otherwise to facilitate the engagement of a tool, for instance, the catching feature 140 may be an aperture or a protrusion. In some embodiments, the catching feature may be specifically designed to mate with a specialized tool to facilitate the removal and/or installation of the tensioning device. Various structures may be used without deviating from the scope of the appended claims.”
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.
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 Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
The claim set submitted 01/29/2026 has two claim 33s. The first one starting at line 4 and the second starting at line 7.
The second claim 33, starting at line 7, is also dependent on claim 33. Examiner is interpreting the second claim 33 to be dependent on claim 31.
Also Claim 34 depends from claim 33. However it is unclear which claim 33, claim 34 actually depends from. Examiner is interpreting claim 34 to depend from the first claim 33 starting at line 4.
Claim Rejections - 35 USC § 112
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.
Claims 31-50 are 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.
Claim 31 recites the limitation “the components” in line 21. However claim 31 line 3 introduces the term “components.” Claim 31 line 17 introduces the term “a component.” Claim 31 line 20 also introduces the term “another component.” Therefore it is unclear which ‘components’ line 21 references. Is line 21 ‘the components’ referencing the term ‘components’ from line 3 or referencing the combination of ‘a component’ from line 17 and ‘another component’ from line 20. As a result, claims 32-38 are also rejected because of their - direct or indirect - dependence on the rejected base claim 31. Appropriate correction is required.
Claim 31 recites the limitation "the compressive portion" in line 19. There is insufficient antecedent basis for this limitation in the claim. As a result, claims 32-38 are also rejected because of their - direct or indirect - dependence on the rejected base claim 31. Appropriate correction is required.
Claim 37 recites the limitation "the planar inner lip portion" in line 17. There is insufficient antecedent basis for this limitation in the claim. As a result, claim 38 is also rejected because of their - direct or indirect - dependence on the rejected base claim 37. Appropriate correction is required.
Claim 38 recites the limitation "the planar inner lip portion" in line 20. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 39 recites the limitation "the grooves" in lines 5, 7, and 23. There is insufficient antecedent basis for this limitation in the claim. It is suggested to amend the limitation to state, “the at least two grooves.” As a result, claim 40-50 are also rejected because of their - direct or indirect - dependence on the rejected base claim 39. Appropriate correction is required.
Claim 39 recites the limitation "the two prongs" in lines 11, 12, 13, and 20. There is insufficient antecedent basis for this limitation in the claim. It is suggested to 1.) amend the limitation in claim 39 lines 8-9 from “a pair of prongs” to state “two prongs,” or 2.) amend the limitation in lines 11, 12, 13, and 20 to state, “the pair of prongs.” As a result, claim 40-50 are also rejected because of their - direct or indirect - dependence on the rejected base claim 39. Appropriate correction is required.
Claim 40 recites the limitation “each groove” in line 1. It is unclear whether claim 40 is introducing a new and distinct groove from the previously introduced “at least two grooves” in claim 39, which claim 40 directly depends from, or merely referencing a specific groove of the at least two grooves claim 39 introduced in line 5. As a result, claim 41 is also rejected because of their - direct or indirect - dependence on the rejected base claim 40. Appropriate correction is required.
Claim 41 recites the limitation “each prong” in line 4. However it is unclear whether the term in claim 41 is referencing a specific prong within the “pair of prongs” of claim 39, which claim 41 indirectly depends from, previously introduces, or merely introducing a new and distinct prong. It is suggested to amend the limitation in claim 41 to state, “each prong of the pair of prongs.” Appropriate correction is required.
Claim 42, recites the term “substantially” in line 9, which is a relative term and renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore it is unclear how substantial the constant radius of curvature along the length of the respective prong actually entails. Appropriate correction is required.
Claim 43 recites the limitation "the longitudinal axis" in line11. There is insufficient antecedent basis for this limitation in the claim. It is suggested to amend the limitation to state, “the respective longitudinal axis.” Appropriate correction is required.
Claim 43 recites the limitation “each prong” in line 11. However it is unclear whether the term in claim 43 is referencing a specific prong within the “pair of prongs” of claim 39, which claim 43 directly depends from, previously introduces, or merely introducing a new and distinct prong. It is suggested to amend the limitation in claim 43 to state, “each prong of the pair of prongs.” Appropriate correction is required.
Claim 44 recites the limitation "the prong" in line 15. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 44 recites the limitation "the corresponding groove" in line 15. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 48 recites the limitation “a respective prong” in line 6. It is unclear whether the limitation in claim 48 is introducing a new and distinct respective prong or merely referencing a specific prong of the previously introduced “pair of prongs” from claim 39, which claim 48 directly depends.
Claim 49 recites the limitation "the grooves" in line 11. There is insufficient antecedent basis for this limitation in the claim. It is suggested to amend the limitation to state, “the at least two grooves.” Appropriate correction is required.
Claim 50 recites the limitation "the length" in line 17. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 50 recites the limitation "the groove fix" in line 19. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 50 recites the term “high enough” in line 20, which is a relative term and renders the claim indefinite. The term “high enough” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore it is unclear how big the opposing force must be to qualify for a user to not be able to move or manipulate the valve when the tension device is position within the groove.
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.
Claims 31-38 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Greenburg et al. (US2010/0198007) hereinafter Greenburg.
Regarding Claim 31, Greenburg discloses a tensioning device configured to removably fasten components together, the tensioning device comprising:
a resilient body including a base (Figs. 6-9 lower ring 12) comprising a planar member (see annotated Fig. 7); and
two prongs (see annotated Fig. 7) extending orthogonally (see annotated Fig. 7) from the base (Figs. 6-9 lower ring 12), each one of the two prongs (see annotated Fig. 7) extending along a respective longitudinal axis (see annotated Fig. 7) between a respective first prong end (see annotated Fig. 7) connected to the base (Figs. 6-9 lower ring 12) and a respective second prong end (see annotated Fig. 7), wherein there is a cut out, open portion (see annotated Fig. 6) between each prong of the two prongs (see annotated Fig. 7) except where the base (Figs. 6-9 lower ring 12) connects to each one of the two prongs (see annotated Fig. 7);
wherein each prong of the two prongs (see annotated Fig. 7) includes a compressive portion having an arcuate surface (see annotated Fig. 6) extending along a length (see annotated Fig. 6) of each prong of the two prongs (see annotated Fig. 7) , the arcuate surface (see annotated Fig. 6) being defined in a cross-section taken transverse to the longitudinal axis (see annotated Fig. 7) of the respective prong (see annotated Fig. 7);
wherein the arcuate surface (see annotated Fig. 6) comprises a convex outer surface (see annotated Fig. 6) and an opposing concave inner surface (see annotated Fig. 6), the convex outer surface (see annotated Fig. 6) being configured for compression against an interior surface of a component to generate a responsive spring force ([0066-0069]); and
wherein each prong of the two prongs (see annotated Fig. 7) further includes an inner lip (see annotated Fig. 6) portion disposed laterally inward of the compressive portion (see annotated Fig. 6) that is configured to engage a corresponding groove of another component so as to retain the tensioning device under tension between the components (Figs. 8-9, accessory device [0066-0069] Examiner’s Note: The limitation “…to engage a corresponding groove of another component so as to retain the tensioning device under tension between the components” is being interpreted as functional language, not claimed structure.).
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Regarding Claim 32, Greenburg discloses the tensioning device of Claim 31, wherein the two prongs (see annotated Fig. 6) are symmetrical to each other.
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Regarding Claim 33, Greenburg discloses the tensioning device of Claim 31, wherein each prong of the two prongs (see annotated Fig. 6) tapers towards its respective end (see annotated Fig. 6).
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Regarding Claim 33, Greenburg discloses the tensioning device of Claim 31, wherein each prong of the two prongs tapers (see annotated Fig. 6) with respect to a width of the respective prong (see annotated Fig. 6).
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Regarding Claim 34, Greenburg discloses the tensioning device of Claim 33, wherein each prong (see annotated Fig. 6) tapers with respect to a height of the respective prong (see annotated Fig. 6).
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Regarding Claim 35, Greenburg discloses the tensioning device of Claim 31, wherein the base (Figs. 6-9 lower ring 12) includes a catching feature (see annotated Fig. 7).
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Regarding Claim 36, Greenburg discloses the tensioning device of Claim 35, wherein the catching feature is an indent (see annotated Fig. 7).
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Regarding Claim 37, Greenburg discloses the tensioning device of Claim 31, wherein the planar inner lip portion (see annotated Fig. 7) is parallel to the planar member (see annotated Fig. 7) of the base (Figs. 6-9 lower ring 12).
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Regarding Claim 38, Greenburg discloses the tensioning device of Claim 37, wherein the planar inner lip portion (see annotated Fig. 7) is coplanar with the planar member (see annotated Fig. 7) of the base (Figs. 6-9 lower ring 12).
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Allowable Subject Matter
Claims 39-50 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten to overcome the 35 U.S.C. §112(b) rejections above.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach, among other features, an endoscope having a housing, a valve removably inserted in a second opening of the housing, and wherein the valve has a mounting porting with at least two grooves that are configured to engage a pair of prongs of a tensioning device as described in independent claim 39.
Greenburg et al. (2010/0198007) alone or in obvious combination with Raphael Meloul (US2009/0088600) or in obvious combination with E.F. Elms (US2873496), teach the above device except for an endoscope comprising: a housing defining an interior compartment, the housing including a first opening closed by a cover and a second opening configured to accommodate a valve, the valve removably inserted into the second opening; the valve including a mounting portion having at least two grooves, the grooves disposed within the interior compartment when the valve is seated within the second opening; and a tensioning device configured to engage the grooves of the mounting portion, the tensioning device including a resilient body having a base comprising a planar member and a pair of prongs extending orthogonally from the base and parallel to each other, each prong extending along a respective longitudinal axis between a first prong end connected to the base and a second prong end, and wherein there is a cut out, open portion between each prong of the two prongs except where the base connects to each prong of the two prongs; wherein each prong of the two prongs includes a compressive portion that extends along the length of the prong, the compressive portion having an arcuate cross-section taken transverse to the respective longitudinal axis of the prong and comprising a convex outer surface and an opposing concave inner surface; wherein the convex outer surface of the compressive portion of each prong of the two prongs is configured to resiliently compress against an inner surface of the housing to generate an outwardly directed spring force; wherein each prong of the two prongs further includes an inner lip portion disposed laterally inward of the respective compressive portion and received within a corresponding groove of the mounting portion such that the spring force generated by the compressive portions biases the prongs into axial retaining engagement with the grooves and thereby retains the valve within the second opening under tension.
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 MEGAN E MONAHAN whose telephone number is (571)272-7330. The examiner can normally be reached Monday - Friday, 8am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Carey can be reached on (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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/MEGAN ELIZABETH MONAHAN/ Examiner, Art Unit 3795
/MICHAEL J CAREY/ Supervisory Patent Examiner, Art Unit 3795
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