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 .
Disposition of Claims
Claims 1-13 are pending.
Claims 1-4 & 7-13 are rejected.
Claims 5-6 are objected to.
Response to Arguments
Applicant’s arguments, see Pages 2-3, filed May 6, 2026, with respect to the rejection under 35 U.S.C. § 102 of Claim 7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, see Pages 2-4, filed May 6, 2026, with respect to the rejections under 35 U.S.C. § 103 of Claims 8-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, see Pages 3-4, filed May 6, 2026, with respect to the rejections under 35 U.S.C. § 103 of Claims 1-4 have been fully considered and are not persuasive.
In response to Applicant’s argument that Shainwald does not teach a control pad carried by the handle and configured to rotate about an axis of the handle, Examiner respectfully disagrees. While Applicant has included Figs. 6A and 6B from Applicant’s specification to show the axis of rotation 245 (i.e., a longitudinal axis of the handle 200) about which the control pad 215 rotates, the axis as claimed, however, is not limited to a longitudinal axis of the handle and can be any axis of the handle. As such, Shainwald teaches a control pad configured to rotate about a transverse axis of the handle. Finally, Applicant is reminded that 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’s arguments, see Pages 4-6, filed May 6, 2026, with respect to the rejections under 35 U.S.C. § 103 of Claims 5-6 have been fully considered and are persuasive.
The rejections under 35 U.S.C. § 103 of Claims 5-6 have been withdrawn.
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 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 is:
"a first positioning component for sensing a rotational orientation of the endoscope" in Claim 7, as described in Para. [0037] of Applicant’s specification (i.e., accelerometer 265).
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is 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 limitation 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 to avoid it 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 recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 8-13 are 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.
Regarding Claim 8, Claim 7, from which it depends, recites the limitation “a first positioning component for sensing a rotational orientation of the endoscope [emphasis added]” on Lines 2-3. Claim 8 further recites “the first positioning component carried by the coupler assembly [emphasis added]” on Line 5. There is no written description for this limitation in Applicant’s specification.
Specifically, Applicant’s specification discloses two separate positioning components:
an accelerometer 255 carried in the handle component 200 and configured to indicate the rotational orientation of the handle component 200 ([0036]); and
an accelerometer 265 carried in a light source connector 264 and configured to indicate the rotational orientation of the connector 265 and the endoscope 55 ([0037]).
Applicant’s specification, however, does not disclose a positioning component carried in the handle component and configured to indicate the rotational orientation of the endoscope 55, given the accelerometer 255 is carried in the handle component 200 but is not configured to indicate the rotational orientation of the endoscope and accelerometer 265 is configured to indicate the rotational orientation of the endoscope 55 but is not carried in the handle component 200.
While Para. [0039] discloses that “signals from… the first accelerometer 255… can provide rotational orientation data of the components”, Applicant has continually argued that a positioning device configured to only determine an orientation of a handle is not configured to/capable of determine an orientation of an endoscope from said just handle orientation data (see Pages 1-2 of Applicant’s Arguments —filed June 29, 2025 & Pages 2-3 of Applicant’s Arguments after Notice of Appeal —filed May 6, 2026). As such, Examiner has determined, in part from the prosecution history, Para. [0039] does not provide adequate support for the accelerometer 255 to indicate the rotational orientation of the endoscope 55. Therefore, Applicant’s disclosure does not provide sufficient written description to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor, at the time the application was filed, had possession of the claimed limitation.
Regarding Claims 9-13, Claims 9-13 are rejected as being dependent upon claims previously rejected under 35 U.S.C. § 112(a).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Graves et al. (hereinafter "Graves") (US 2014/0066710).
Regarding Claim 7, Graves discloses a connector (a housing; [0027]) adapted for coupling to an endoscope lens (a viewing portal; [0026]) on an endoscope (a rigid endoscope; [0025]), the connector comprises a first positioning component (a position sensor; [0035]) for sensing a rotational orientation of the endoscope ([0035]).
Regarding Claim 8, Graves discloses the connector of Claim 7. Graves further discloses a handle (see Fig. 1) with a coupler assembly (see Fig. 1) comprising a rotatable C-mount coupler (coupling brackets; [0034]) for coupling to the endoscope lens ([0034]);
an image sensor (a camera; [0030]) carried by the coupler assembly ([0030]);
the first positioning component carried by the coupler assembly ([0009] & Claim 4); and
a control pad (Fig. 4, a rotary encoder; [0031]) rotatably carried by the handle ([0031]), wherein the control pad is operably connected to a controller (Fig. 6, control circuitry/ a microprocessor; [0032] – [0033]) for controlling an operation of the endoscope ([0031]).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Pang et al. (hereinafter "Pang") (US 2021/0127948) in view of Shainwald (US 2021/0100431).
Regarding Claim 1, Pang discloses an endoscopic system (Fig. 7, 10; [0150]) for use with a video display (Fig. 7, 29; [0151]), the endoscopic system comprising:
a handle (Figs. 1B & 7, a body of 13 wherein 13 is 108; [0085] & [0150]) with a coupler assembly (Figs. 1B & 7, 13 wherein 13 is 108; [0085] & [0150]) comprising a rotatable C-mount coupler (Figs. 1B & 7, 14 wherein 14 is 111B; [0085], [0147] & [0150]) for coupling to a lens ([0086]) of an endoscope (Figs. 1B & 7, 12 wherein 12 is 110; [0085] & [0150]);
an image sensor carried by the coupler assembly (Fig. 1B, 106; [0084]);
a first positioning component carried by the coupler assembly (Fig. 1B, 124A; [0095]); and
a control pad (Fig. 7, 20; [0151]) carried by the handle ([0151]), wherein the control pad is operably connected to a controller for controlling an operation of the endoscopic system (Figs. 1B & 7, 17 wherein 17 is 104; [0084] & [0150]).
Pang fails to explicitly disclose wherein the control pad is configured to rotate about an axis of the handle.
However, Shainwald teaches an endoscopic system (Fig. 2, 200; [0033]) comprising:
a handle (Fig. 2, 205; [0033]) with a rotatable C-mount coupler (Fig. 2, 250; [0036]) for coupling to an endoscope (Fig. 2, 245; [0033]);
and a control pad (Fig. 2, 210; [0033]) carried by the handle ([0033]) and configured to rotate about an axis of the handle (Fig. 2, 210 rotates about an axis of 205 that is perpendicular to a longitudinal axis of 205; [0033]).
The advantage of the rotary control pad is to permit operation of the control pad with only a single finger (Shainwald; [0034]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the control pad as disclosed by Pang, to be the rotary control pad taught by Shainwald, to permit operation of the control pad with only a single finger (Shainwald; [0034]).
Regarding Claim 2, Pang, as previously modified by Shainwald, teaches the endoscopic system of Claim 1. Pang further discloses wherein the handle carries the first positioning component (Fig. 1B, 124A is disposed in the body of 108; [0095]) that is configured to send a first signal to the controller indicating a rotational orientation of the handle ([0094]).
Regarding Claim 3, Pang, as previously modified by Shainwald, teaches the endoscopic system of Claim 2. Pang further discloses where the first positioning component is carried in an interior non-rotating portion of the handle (Fig. 1B, the body of 108 does not internally rotate; [0092] & [0093]).
Regarding Claim 4, Pang, as previously modified by Shainwald, teaches the endoscopic system of Claim 1. Pang further discloses where the first positioning component comprises at least one of a gyroscope and an accelerometer ([0092]).
Allowable Subject Matter
Claims 5-6 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 5, Pang, as previously modified by Shainwald, teaches the endoscopic system of Claim 1. Pang further discloses a light source (Fig. 7, 15; [0150]) and a cable (Figs. 1B & 7, 18 wherein 18 is 116; [0086] & [0150]), where the light source comprises a light source connector (a light port; see Fig. 7).
Pang, as previously modified by Shainwald, fails to explicitly disclose wherein the light source comprises a second position component carried in the light source connector and configured to provide a second positioning component signal to the controller indicating rotational orientation of the light source connector and the endoscope to allow control algorithms of the controller to stabilize a video image in an upright position on the video display.
Irion et al. (US 2010/0022829) teaches an endoscopic system a light source (Fig. 1, 14; [0083]) and a cable (Fig. 1, 20; [0084]),
where the light source comprises a positioning component (Fig. 1, 34; [0088]) carried in a connector (Fig. 1, 16; [0084]);
wherein the position component is configured to provide a positioning component signal to a controller (a controller; [0104]) indicating rotational orientation of the connector ([0113]).
Irion et al. fails to explicitly disclose, teach or suggest wherein the position component is configured to indicate a rotational orientation of the endoscope to allow control algorithms of the controller to stabilize a video image in an upright position on the video display.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN FLOYD LONDON whose telephone number is (571)272-4478. The examiner can normally be reached Monday - Friday: 10:00 am ET - 6:00pm ET.
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, MICHAEL 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.
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.
/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795
Prosecution Insights