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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/04/2025 has been entered.
Status of Claims
Amendments filed 11/04/2025 have been entered. Claims 1-13 are pending and currently under consideration for patentability under 37 CFR 1.104
Foreign Priority
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d). The certified copies have been received.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on08/22/2025, 09/17/2025, 09/29/2025 have been considered by the examiner.
Claim Rejections - 35 USC § 103
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) 1-6 and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lucey et al. (U.S. 5,621,830) in view of Lee-Sepsick (U.S. D692,134).
With respect to claim 1, Lucey et al. teaches an endoscope comprising:
an insertion unit (12) that is provided with an optical system at a distal end thereof (FIG. 2) and that is rotatable in a direction around an insertion axis (2:54-61);
an image pickup unit (52) configured to pickup an image of light passing through the optical system (FIG. 2) and
an operation unit (14) that is connected to a proximal end side of the insertion unit (FIG. 1),
wherein the operation unit includes a grip part that extends in a direction of the insertion axis (FIG. 1), and a rotational operation member (16) that is provided between the grip part and the insertion unit, is adapted to be rotatable relative to the grip part, and rotates the insertion unit in the direction around the insertion axis (2:54-61),
the rotational operation member includes a finger placing portion on which the finger is placeable and a pair of finger rest portions that is provided on both sides of the finger placing portion in the direction around the insertion axis (FIG. 9), and is configured to protrude from the finger placing portion (see FIG. 2 and 9 for example which depict the fluted surface of knob 16) and receiving an operation force in the direction around the insertion axis from the finger (intended use).
However, Lucey et al. does not teach the grip part includes a first flat surface. Lucey et al. further does not teach the finger placing portion is provided at a position facing the first flat surface portion in the direction of the insertion axis in a case where the rotational operation member is positioned at a reference position used as a reference of a position relative to the grip part in the direction around the insertion axis
With respect to claim 1, Lee-Sepsick teaches a medical device comprising:
an insertion unit (FIG. 1, also see annotated FIG. below),
an operation unit that is connected to a proximal end side of the insertion unit (FIG. 1),
wherein the operation unit includes a grip part that extends in a direction of the insertion axis, and a rotational operation member that is provided between the grip part and the insertion unit, and is adapted to be rotatable relative to the grip part (see annotated FIG. below),
the grip part includes a first flat surface portion that is formed along the insertion axis on a part of an outer surface of the grip part (see annotated FIG. below) and is configured to receive a base portion of a finger of a practitioner who grips the grip part (intended use),
the rotational operation member includes a finger placing portion on which a finger is placeable (FIG. 2),
the finger placing portion is provided on an extension of the first flat surface in the direction of the insertion axis and is provided at a position facing the first flat surface portion in the direction of the insertion axis in a case where the rotational operation member is positioned at a reference position (FIG. 2) used as a reference of a position relative to the grip part in the direction around the insertion axis (intended use).
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Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify Lucey et al. to have a first flat surface portion in the manner taught by Lee-Sepsick so that the finger placing portion is provided at a position facing the first flat surface portion in the direction of the insertion axis because it would be a simple substitution of one handle shape for another handle shape, and the results of this substitution would have been predictable. Such a modification would result in the first flat surface portion including a surface perpendicular to a vertical direction of an image formed from image pickup signals output from the image pickup unit.
With respect to claim 2, Lee-Sepsick teaches the first flat surface portion is formed over a proximal end portion from a distal end portion of the grip part in the direction of the insertion axis (FIG. 4 for example).
With respect to claim 3, Lee-Sepsick teaches the first flat surface portion includes a first index, the finger placing portion includes a second index, and the first index and the second index are provided on a same line extending in the direction of the insertion axis in a case where the rotational operation member is positioned at the reference position (FIG. 1, 4, 5, 7 ,9).
With respect to claim 4, Lee-Sepsick teaches the first index and the second index are convex portions (FIG. 4).
With respect to claim 5, Lee-Sepsick teaches the convex portion is a convex stripe portion formed along ht4e same line (FIG. 1, 4, 5, 7, 9).
With respect to claim 6, Lee-Sepsick teaches the grip part includes a second flat surface portion parallel to the first flat surface portion and formed on the outer surface of the grip part at a position on a side opposite to the first flat surface portion with the insertion axis interposed between the first flat surface portion adnt he second flat surface portion (FIG. 4, 5).
With respect to claim 10, Lucey et al. teaches the rotational operation member is adapted to be rotatable between a first rotational position and a second rotational position relative to the grip part in the direction around the insertion axis, and the reference position is a middle position between the first rotational position and the second rotational position (FIG. 1 for example).
With respect to claim 11, Lucey et al. in view of Lee-Sepsick teaches the surface of the first flat surface portion is formed on the outer surface of the grip part, at a position indicating a top side in the vertical direction o the image that is a direction indicating a top and a bottom of the image (FIG. 2 of Lucey et al., FIG. 4-5 of Lee-Sepsick).
With respect to claim 12, Lucey et al. teaches an image pickup direction of the image pickup unit is a direction inclined with respect to the insertion axis (FIG. 1), and the image pickup direction of the image pickup unit includes a component corresponding to a direction that faces a side opposite to a normal direction to the first flat surface portion in a case where the rotational operation member is positioned at the reference position (FIG. 1).
With respect to claim 13, Lucey et al. teaches the insertion unit includes an outer pipe (12), a protection sheath that is inserted into the outer pipe, is provided with the optical system at a distal end thereof (50), and is rotatable integrally with the outer pipe in the direction around the insertion axis of the insertion unit (6:55-60), and an inner sheath (54) that is inserted into the protection sheath, is provided with the image pickup unit (52), at a distal end thereof, and is rotatable relative to the protection sheath in the direction around the insertion axis (6:10-24).
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lucey et al. (U.S. 5,621,830) in view of Lee-Sepsick (U.S. D692,134) as applied to claim 3 and further in view of Finson et al. (U.S. 2019/0374751).
Lucey et al. in view of Lee-Sepsick teaches a endoscope as set forth above. However, Lucye et al. in view of Lee-Sepsick does not teach a third index.
With respect to claim 7, Finson et al. teaches an endoscope with a rotational operation member that includes a third index (506) formed at a position different from a position of a second index (512) and indicating a position relative to the grip part in the direction around the insertion axis (para [0054]).
With respect to claim 8, Finson et al. teaches the third index is a concave portion (para [0054]).
With respect to claim 9, Finson et al. teaches the concave portion is a concave stripe portion formed in the direction of the insertion axis (FIG. 5A).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify Lucey to utilize the concave index as taught by Finson et al. in order to promote gripping of the knob (para [0054] of Finson et al.).
Response to Arguments
Applicant's arguments filed 11/04/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that Lucey fails to teach that the grip part includes the first flat surface and Lucey further fails to teach the finger placing portion is provided at a position facing the first flat surface portion in the direction of the insertion axis, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Lee-Sepsick is used to teach this limitation.
In response to applicant's argument that Lee-Sepsick fails to teach a correspondence between the surface and the picked-up image, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As set forth above, modifying Lucey in view of Lee-Sepsick would result in the first flat surface portion including a surface perpendicular to a vertical direction of an image formed from image pickup signals output from the image pickup unit.
Conclusion
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/ALEXANDRA L NEWTON/Primary Examiner, Art Unit 3799