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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the feature of “the first pair of spaced apart arcuate segments of the second link are non-contiguous” claimed in Claim 51 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The plain meaning of “non-contiguous” is inconsistent with and/or is not defined in the specification. That is, as stated in the attached definition from Merriam-Webster’s online dictionary, “non-contiguous” is defined as “not contiguous”. Due to this tautology, one must then refer to the attached Merriam-Webster’s online dictionary for the definition of “contiguous”. As stated in the attachment, Merriam-Webster’s online dictionary defines contiguous as touching along a boundary.
Paragraph [0038] of the present specification refers to FIG. 2A, and states “Each link of the articulation joint 122 may be circumferentially non-contiguous including spaced-apart, radially extending arcuate segments between which a spring member is coupled. For example, link 130 may include arcuate segments 150, 152, 154, 156 separated and arranged radially about axis A1…An upper portion of the spring member 142 may be coupled between segments 154, 156 and a lower portion of the spring member 142 may be coupled between segments 164, 166. An upper portion of the spring member 144 may be coupled between segments 160, 166 and a lower portion of the spring member 144 may be coupled between segments 170, 176”). Therefore, FIG. 2A shows the arcuate segments as being contiguous rather than non-contiguous. That is, the arcuate segments in FIG. 2A are shown as being connected/touching, via the connection/boundary created a spring member 142. No other figures in the present specification show the arcuate segments as being non-contiguous.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 51 is 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. Claim 51 is further rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
That is, if Applicant intends the feature of “the first pair of spaced apart arcuate segments of the second link are non-contiguous” as meaning that the arcuate segments do not meet the definition of “non-contiguous” as described in the objection to the figures above (“separated by a boundary”), but rather are somehow free-floating, then the written description and figures fail to show that the inventor had possession of such a structure, and/or fails to describe such free-floating arcuate segments in such a way as to enable one skilled in the art to make or use such arcuate segments.
Appropriate correction by Applicant is required.
For purposes of examination, Examiner interprets the phrase “the first pair of spaced apart arcuate segments of the second link are non-contiguous” as meaning that “the first pair of spaced apart arcuate segments of the second link are linked together by a shared boundary”.
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 51 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.
That is, it is unclear if Applicant intends the feature of “the first pair of spaced apart arcuate segments of the second link are non-contiguous” means that the arcuate segments are somehow free-floating, or that arcuate segments do not touch one another along a boundary (e.g., created by a spring member), or the arcuate segments are not near one another in time or space, or that the arcuate segments are not connected in an unbroken sequence (see attached definition of “contiguous” from Merriam-Webster), or that, as shown and described in the specification, the arcuate segments are actually linked together by a shared boundary.
Appropriate correction by Applicant is required.
For purposes of examination, Examiner interprets the phrase “the first pair of spaced apart arcuate segments of the second link are non-contiguous” as meaning that “the first pair of spaced apart arcuate segments of the second link are linked together by a shared boundary”.
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 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 51 and 53-56 are rejected under 35 U.S.C. 103 as being unpatentable over Boulais et al. (US PGPUB 2005/0131279 – “Boulais”) in view of Ochi et al. (US PGPUB 2007/0255105 – “Ochi”) and Simchony et al. (US PGPUB 2015/0359416 – “Simchony”).
Regarding Claim 51, Boulais discloses:
A catheter system (Boulais FIG. 1A, endoscope 20) comprising:
an articulation joint (articulation joint in Examiner-annotated Boulais FIG. 23A, shown below) including a pair of links (Boulais FIG. 23A, first link pair or second link pair) including a first link and a second link;
PNG
media_image1.png
580
566
media_image1.png
Greyscale
a spring (Boulais FIG. 23A, spring 1006) coupled between a first pair of spaced apart segments of the first link (Boulais FIG. 23A, upper pair of arcuate segments in the first link pair) and between a first pair of spaced apart arcuate segments of the second link (Boulais FIG. 23A, lower pair of arcuate segments in the second link pair), the spring bendable to allow articulation of the pair of links along a first plane of motion (see Boulais paragraph [0190]), wherein the first pair of spaced apart segments of the first link are non-contiguous (Boulais FIG. 23A, showing non-contiguous pair of segments in the first link), and wherein the first pair of spaced apart arcuate segments of the second link are non-contiguous (Boulais FIG. 23A, showing arcuate segments separated by springs 1006). Examiner also notes that Boulais discloses in paragraph [0181] that springs 1006 are welded to rings 1002, thus forming a boundary between arcuate segments, and meeting the interpretation of “non-contiguous” presented above in the objection to the figures and rejections under 35 U.S.C. 112a/b.
Boulais does not explicitly disclose a tubular liner extending through a central passage bounded by the articulation joint, wherein the tubular liner includes an outer surface including a groove sized to receive a portion of the spring.
Ochi teaches a tubular liner (Ochi FIG. 3, inner tube 60) extending through a central passage (Ochi FIG. 1 and Ochi FIG. 3, treatment tool insertion channel 6) bounded by the articulation joint (Ochi FIG. 1, bendable part 2; Ochi paragraph [0037], “treatment tool insertion channel 6 is arranged over the entire length of the inner space of the bendable part 2 and the flexible tube 1”), wherein the tubular liner includes an outer surface including a groove (Ochi FIG. 3, spiral groove 160) sized to receive a portion of the spring (Ochi FIG. 3, coil 61).
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 Ochi’s grooved tube with Boulais’ catheter system. A person having ordinary skill in the art would be motivated to make this simple substitution of one known element for another to obtain the predictable result of a catheter system having articular springs that are secured to the catheter, in order to avoid spring/coil slack or entanglement.
Boulais in view of Ochi does not explicitly teach a control wire extending through the spring.
Simchony teaches a control wire (Simchony FIG. 3, steering wires 14) extending through the spring (Simchony FIG. 3, spring-like sleeves 16; see Simchony paragraph [0047]).
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 Simchony’s control wire with the catheter system taught by Boulais in view of Simchony. 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 having protected steering wires for a steerable flexible tube (see Simchony paragraph [0047]).
Regarding Claim 53, Boulais in view of Ochi and Simchony teach the features of Claim 51, as described above.
Ochi further teaches wherein the tubular liner includes a central channel sized to slidably receive an instrument (Ochi FIG. 3, inner tube 60 within treatment tool insertion channel; see also Ochi paragraph [0038]).
Regarding Claim 54, Boulais in view of Ochi and Simchony teach the features of Claim 51, as described above.
Boulais further discloses wherein an outer surface of the spring is within an outer diameter of the first link of the pair of links (Boulais FIG. 23A, showing spring 1006 within outer diameter of link pairs).
Regarding Claim 55, Boulais in view of Ochi and Simchony teach the features of Claim 51, as described above.
The first embodiment of Boulais shown in Boulais FIG. 23A and cited above does not explicitly disclose wherein an outer surface of the spring extends to an outer diameter of the first link to maximize an inner lumen space of the first link.
A second embodiment of Boulais shown in Boulais FIG. 23B discloses wherein an outer surface of the spring extends to an outer diameter of the first link to maximize an inner lumen space of the first link (Boulais Fig. 23B, showing springs 1010 within rings 1008).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to replace the positions of springs 1010 shown in Boulais FIG. 23A with the positions of the springs 1010 shown in Boulais FIG. 23B. A person having ordinary skill in the art would be motivated to make this simple substitution of one known element for another to obtain the predictable result of an articulation joint whose cables/springs are protected from external forces.
Regarding Claim 56, Boulais in view of Ochi and Simchony teach the features of Claim 51, as described above.
Boulais further discloses wherein an end of a first segment of the first pair of spaced apart segments of the first link is spaced apart from an end of a second segment of the first pair of spaced apart segments by a first gap (Boulais FIG. 23A, first gap), and wherein an end of a first arcuate segment of the first pair of spaced apart arcuate segments of the second link is spaced apart from an end of a second arcuate segment of the first pair of spaced apart arcuate segments by a second gap (Boulais FIG. 23A, second gap).
Response to Arguments
Applicant's arguments filed January 7, 2026, regarding the rejections of Claims 51 and 53-56, have been fully considered but they are not persuasive. More specifically, on pages 7-9, Applicant asserts that no combination of the cited prior art teaches or suggests “wherein the first pair of spaced apart segments of the first link are non-contiguous, and wherein the first pair of spaced apart arcuate segments of the second link are non-contiguous” (Claim 51) or “wherein an end of a first segment of the first pair of spaced apart segments of the first link is spaced apart from an end of a second segment of the first pair of spaced apart segments by a first gap, and wherein an end of a first arcuate segment of the first pair of spaced apart arcuate segments of the second link is spaced apart from an end of a second arcuate segment of the first pair of spaced apart arcuate segments by a second gap” (Claim 56).
Regarding then Claim 51, as described above Examiner-annotated Boulais FIG. 23A, shows a non-contiguous pair of segments in the first link (“wherein the first pair of spaced apart segments of the first link are non-contiguous”). Further, as described above, the phrase “the first pair of spaced apart arcuate segments of the second link are non-contiguous” is interpreted as “the first pair of spaced apart arcuate segments of the second link are linked together by a shared boundary”, which is disclosed by Boulais FIG. 23A, which shows arcuate segments separated by springs 1006”. Examiner also notes that Boulais discloses in paragraph [0181] that springs 1006 are welded to rings 1002, thus forming a boundary between arcuate segments.
Regarding Claim 56, Boulais further discloses wherein an end of a first segment of the first pair of spaced apart segments of the first link is spaced apart from an end of a second segment of the first pair of spaced apart segments by a first gap (Boulais FIG. 23A, first gap), and wherein an end of a first arcuate segment of the first pair of spaced apart arcuate segments of the second link is spaced apart from an end of a second arcuate segment of the first pair of spaced apart arcuate segments by a second gap (Boulais FIG. 23A, second gap), as described above.
Thus, the rejections of Claims 51 and 53-56 under 35 U.S.C. 103 are maintained.
Allowable Subject Matter
Claims 1-11, 15-25, and 28-29 are allowed. The following is an examiner’s statement of reasons for allowance:
Regarding independent Claim 1, no combination of the identified prior art teaches or suggests wherein the tubular liner includes an outer surface including a groove sized to receive at least one of an imaging component, a sensor, an illumination component, or an irrigation component. The closest identified prior art is Shia (US PGPUB 2022/0126060 – “Shia”). As stated in the February 6, 2025 non-final rejection, groove 830 in inner liner 210 shown in Shia FIG. 8A is only practical for securing a guide ring, not an imaging component, a sensor, an illumination component, particularly since these components would be internal to outer layer 210b of the catheter, as shown in Shia FIG. 6A. Similarly, Shia’s groove would not be used for an irrigation component, since they run circumferentially, rather than axially, along the catheter. Furthermore, Ochi’s spiral groove 160 cited in the rejection of Claim 51 would not be reasonable to receive at least one of an imaging component, a sensor, an illumination component, or an irrigation component, due to the spiral, rather axial, nature of Ochi’s groove 160.
Dependent Claims 2-8 are allowed based on their dependence on independent Claim 1.
Regarding independent Claim 9, no combination of the identified prior art teaches or suggests a third spring coupled between a second pair of spaced apart segments of the first link of the second pair of links and between a second pair of spaced apart segments of the second link of the second pair of links, the second spring bendable to allow articulation of the second pair of links along the second plane of motion. The closest identified prior art is Banik et al. (US PGPUB 2005/0075538 – “Banik”). However, Banik fails to teach or suggest a third spring coupled between a second pair of spaced apart segments of the first link of the second pair of links and between a second pair of spaced apart segments of the second link of the second pair of links.
Dependent Claims 10-11, 15-25, and 28-29 are allowed based on their dependence on independent Claim 9.
Furthermore, there is no reason or suggestion provided in the prior art to modify the above prior art to teach the limitations as claimed above, and the only reason to modify the references would be based on Applicant's disclosure, which is impermissible hindsight reasoning.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure includes:
LaBombard (US PGPUB 2007/0270752 – “LaBombard”), which is analogous art that teaches in FIG. 4D interlocking multi-lumen tubular element 100 that has linear sections that, although they share an inner surface 99, are non-contiguous and defined by gaps/channels 119.
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.
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.
JIM BOICE
Examiner
Art Unit 3795
/JAMES EDWARD BOICE/Examiner, Art Unit 3795
/ANH TUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
3/9/26