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 .
Election/Restrictions
Applicant’s election without traverse of Species A, readable on claims 1-12 and 15-20 in the reply filed on 12/12/2025 is acknowledged.
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.
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 8-10 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 8 recites the limitation "protruding portion of the fixation ring" in Line 6. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishiguro et al. (US Patent No. 5,871,441, hereinafter Ishiguro).
In regard to claim 1, Ishiguro discloses an endoscope (2, Fig. 1) comprising:
a handle (5, Fig. 1);
a distal tip unit (8) configured to be inserted into a patient's body cavity (Fig. 1);
an endoscope shaft (4) connecting the handle and the distal tip unit (Fig. 1);
a working channel (29, 30) extending from the handle through the endoscope shaft towards the distal tip unit (Fig. 3); and
a suction valve (1) configured to control a suction through the working channel and having a valve closed state (Fig. 21) and a valve open state (Fig. 23), the suction valve comprising:
a housing (81) having an inlet opening (93) connected to the working channel and an outlet opening (94);
a piston unit (5) inserted in the housing (Fig. 1), the piston unit comprising:
a movable piston (38, Fig. 1);
a button (37) attached to the piston (Fig. 1);
a fixation ring (39) arranged stationary in the housing (Fig. 1); and
a spring (49) arranged and acting between the fixation ring and the button or the piston (Fig. 1);
the fixation ring being configured to urge the piston towards the inlet opening of the housing in the valve closed state (Figs. 1, 21 illustrate the piston biased to cover the inlet opening in the valve closed state).
In regard to claim 19, Ishiguro discloses a system (2, Fig. 1) comprising an endoscope (2) according to claim 1 (see rejection of Claim 1) and a suction device connectable to the outlet opening (Col. 4, Lines 26-27).
In regard to claim 20, Ishiguro teaches wherein the endoscope further comprises an image capturing means arranged at the distal tip unit (Col. 4, Lines 27-31), and wherein the system further comprises a monitor (27) configured to show an image captured by the image capturing means (Fig. 2).
Claims 1-7 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Otani (US Patent No. 4,537,182).
In regard to claim 1, Otani discloses an endoscope (21, Fig. 3) comprising:
a handle (22, Fig. 3);
a distal tip unit (34) configured to be inserted into a patient's body cavity (Fig. 3);
an endoscope shaft (23) connecting the handle and the distal tip unit (Fig. 3);
a working channel (32) extending from the handle through the endoscope shaft towards the distal tip unit (Fig. 3); and
a suction valve (27) configured to control a suction through the working channel and having a valve closed state (Fig. 3) and a valve open state (Fig. 1), the suction valve comprising:
a housing (36) having an inlet opening (48) connected to the working channel and an outlet opening (56);
a piston unit (47) inserted in the housing (Fig. 4), the piston unit comprising:
a movable piston (37, Fig. 4);
a button (44) attached to the piston (Fig. 4);
a fixation ring (39) arranged stationary in the housing (Fig. 4); and
a spring (46) arranged and acting between the fixation ring and the button or the piston (Fig. 4);
the fixation ring being configured to urge the piston towards the inlet opening of the housing in the valve closed state (Fig. 4 illustrate the piston biased to cover the inlet opening in the valve closed state).
In regard to claim 2, Otani teaches wherein the fixation ring is configured to assist in sealing the piston in the valve closed state (Fig. 4 illustrates the piston contacting the fixation ring in the valve closed state).
In regard to claim 3, Otani teaches wherein the fixation ring has a ring- shaped portion and a protruding portion extending axially away from the ring-shaped portion and along the piston, and at least an end portion of the protruding portion is brought into contact with the piston at least in the valve closed state to urge the piston towards the inlet opening of the housing (see annotated Fig. 3 below).
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In regard to claim 4 Otani teaches wherein the protruding portion is arranged diametrically opposed with respect to the inlet opening of the housing (the protruding portion has a circular shape and a portion of the protruding portion is diametrically opposed to the inlet opening, Fig. 4).
In regard to claim 5, Otani teaches wherein the piston comprises a first piston portion, a second piston portion and a transition area between the first piston portion and the second piston portion (see annotated Fig. 4 above).
In regard to claim 6, Otani teaches wherein the piston has a radially outwardly protruding rim portion in the transition area between the first piston portion and the second piston portion, the radially outwardly protruding rim portion being urged against the fixation ring by the spring in the valve closed state (see annotated Fig. 4 above).
In regard to claim 7, Otani teaches wherein the protruding portion extends from the ring-shaped portion towards and along the second piston portion in an axial direction of the piston (see annotated Fig. 4 above).
In regard to claim 19, Otani discloses a system (21, Fig. 2) comprising an endoscope (21) according to claim 1 (see rejection of Claim 1) and a suction device (35) connectable to the outlet opening (Fig. 2).
Allowable Subject Matter
Claims 15-18 are allowed.
Claims 11-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 8-10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN N HENDERSON whose telephone number is (571)270-1430. The examiner can normally be reached Monday-Friday 6am-5pm (PST).
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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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/RYAN N HENDERSON/Primary Examiner, Art Unit 3795 January 24, 2026