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 .
Status of Claims
Applicant’s amendments mailed 04/20/2026 have be entered. Claims 1-12 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 on 04/07/2026, 05/21/2026, 05/22/2026 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, 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Intintoli et al. (U.S. 2019/0298321) in view of Lee-Sepsick (D692,134).
With respect to claim 1, Intintoli et al. teaches an operation unit that is connected to a proximal end side of an insertion unit of an endoscope, the insertion unit being provided with an optical system and an image pickup unit picking up an image of light passing through the optical system (para [0110],[0115] for example), the operation unit comprising:
a grip part that extends in a direction of an insertion axis of the insertion unit (FIG. 3B);
a first flat surface portion that is formed on an outer surface of the grip part at a position on a top side in a vertical direction, extends in the direction of the insertion axis, and is perpendicular to the vertical direction in a case where a direction which indicates a top and a bottom of an image formed from image pickup signals output from the image pickup unit, among directions perpendicular to the direction of the insertion axis, is defined as the vertical direction (FIG. 2B,C for example);
an operation member (1144) that includes only one finger placing portion on which a finger of a practitioner who grips the grip part is placeable, wherein the operation member is configured to receive an operation by the finger placed on the only one finger placing portion (para [0111]).
However, Intintoli et al. does not expressly teach a second flat surface portion.
With respect to claim 1, Lee-Sepsick et al. teaches an operation unit comprising:
a second flat surface portion that is formed on the outer surface of the grip part at a position on a bottom side in the vertical direction, extends in the direction of the insertion axis, and is perpendicular to the vertical direction (FIG. 4, 5, 7, 8),
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 the grip part of Intintoli et al. to have a second flat surface in the manner taught by Lee-Sepsick et al. because doing so would be a simple substitution of one known shape for another, and the results of such a substitution would have been predictable. As a result of this modification, the shape of the first flat surface portion (FIG. 2B of Intintoli for example) is different from that of the second surface portion (FIG. 4,5,7,8 OF Lee-Sepsick et al.).
With respect to claim 2, Lee-Sepsick et al. teaches the grip part includes a first curved surface portion that connects a side edge portion of the first flat surface portion positioned on one side in a perpendicular direction to a side edge portion of the second flat surface portion positioned on the one side in the perpendicular direction and that bulges on the one side in the perpendicular direction in a case where a direction perpendicular to both the direction of the insertion axis and the vertical direction is defined as the perpendicular direction, and a second curved surface portion that connects a side edge portion of the first flat surface portion positioned on the other side in the perpendicular direction to a side edge portion of the second flat surface portion positioned on the other side in the perpendicular direction and that bulges on the other side in the perpendicular direction (FIGS. 1, 2, 7, 8).
With respect to claim 3, Intintoli et al. teaches a proximal end portion of the grip part is formed in a shape of a dome (FIG. 2C for example).
With respect to claim 4, Intintoli et al. teaches the first flat surface portion is formed over a proximal end portion of the grip part from a distal end portion of the grip part (FIG. 2B,C).
With respect to claim 4, Lee-Sepsick teaches the second flat surface portion is formed over a position on a front side of the proximal end portion of the grip part form the distal end portion of the grip part, and a part of the proximal end portion of the grip part is a bulging portion that bulges on the bottom side of the second flat surface portion in the vertical direction (FIG. 4, 5).
With respect to claim 5, Lee-Sepsick teaches an inclined flat surface portion that is connected between a proximal end of the second flat surface portion and the bulging portion and that is include toward the bottom side in the vertical direction the further it extends toward a proximal side from the proximal end of the second flat surface portion (FIG, 4, 5).
With respect to claim 6, Intintoli et al. teaches a cable insertion portion (1124) which protrudes at a position offset to the bottom side in the vertical direction from a proximal apex of a proximal end portion of the grip part (FIG. 2B for example) and into which a cable to be connected to the image pickup unit is inserted (para [0089] for example)), wherein as viewed in a perpendicular direction perpendicular to both the direction of the insertion axis and the vertical direction, the cable insertion portion protrudes in a direction that corresponds to a proximal end side of the proximal end portion of the grip part and is inclined toward the bottom side in the vertical direction with respect to the direction of the insertion axis (FIG. 2B for example).
With respect to claim 8, Intintoli teaches the grip part is made of a rubber material or a resin material (para [0132]).
With respect to claim 9, Intintoli in view of Lee-Sepsick teaches an endoscope comprising:
an insertion unit that is provided with an optical system and an image pickup unit picking up an image of light passing through the optical system (para [0110],[0115] of Intintoli); and
the operation unit according to claim 1 (see rejection above) that is connected to a proximal end side of the insertion unit (FIG. 2c of Intintoli).
Claim(s) 7, and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Intintoli et al. (U.S. 2019/0298321) in view of Lee-Sepsick (D692,134) as applied to claim 1 above, and further in view of Lucey et al. (U.S. 5,621,830).
Intintoli et al. inview of Lee-Sepsick teaches an endoscope as set forth above. However, Intintoli et al. in view of Lee-Sepsick does not teach an outer pipe, protection sheath, and inner sheath.
With respect to claim 7, Lucey et al. teaches an inner sheath-fixing part that is provided in the grip part not to be rotatable relative to the grip part in a direction around the insertion axis and that fixes a proximal end side of an inner sheath (6:10-24) in a case where the insertion unit includes an outer pipe (92) held on a distal end side of the grip part to be relatively rotatable in the direction around the insertion axis (6:10-24), a protection sheath (90) inserted into the outer pipe and rotating in the direction around the insertion axis integrally with the outer pipe (6:10-24), and an inner sheath (54) inserted into the protection sheath and rotatable relative to the outer pile and to the protection sheath in the direction around the insertion axis (6:10-24), the optical system is provided on a distal end side of the protection sheath (FIG. 6), and the image pickup unit is provided on a distal end side of the inner sheath (FIG. 2); and an annular rotational operation member (16) that is fixed to a proximal end side of the outer pipe and rotates the outer pipe in the direction around the insertion axis (6:10-24).
With respect to claim 10, Lucey et al. teaches the insertion unit includes an outer pipe (92) held on a distal end side of the grip part to be relatively rotatable in a direction around the insertion axis (6:10-24), a protection sheath (90) inserted into the outer pipe (FIG. 6) and rotating in the direction around the insertion axis integrally with the outer pipe (6:10-24), an inner sheath (54) inserted into the protection sheath and rotatable relative to the outer pipe and to the protection sheath in the direction around the insertion axis (6:10-24), and an inner sheath-fixing part that is provided in the grip part (FIG. 5) not to be rotatable relative to the grip part in the direction around the insertion axis and that fixes a proximal end side of the inner sheath (6:10-24), the optical system is provided on a distal end side of the protection sheath (FIG. 6), and the image pickup unit is provided on a distal end side of the inner sheath (FIG. 2).
With respect to claim 11, Lucey et al. teaches the operation member is annular-shaped (16) and is fixed to a proximal end side of the outer pipe (FIG. 5) and rotates the outer pipe in a direction around the insertion axis (6:10-24).
With respect to claim 12, Lucey et al. teaches the optical system includes a refractive optical element refracting light incident in a direction which is included with respect tot the insertion axis, in a direction parallel to the insertion axis (FIG. 2).
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 Intintoli et al. to utilize the insertion unit as taught by Lucey et al. in order to allow the user to view different areas without requiring that the entire endoscope be rotated (1:25-33) of Lucey et al.),
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/057141 (hereinafter ‘141). Although the conflicting claims are not identical, they are not patentably distinct from one another because the claims of '141 "anticipate" the broader claims of the present application. Accordingly, the claims of the present application are not patentably distinct from those in '141. Since it is clear that the more specific '141 claims encompass the claims of the present application, following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 04/20/2026 have been fully considered but they are not persuasive.
On page 6, Applicant argues that according to Intintoli, the external thumb wheel 1144 is manually turned by the user, and the position on which the thumb is placed moves each time the wheel 1144 is turned. This is not persuasive. It is noted that the claim does not define a specific shape or configuration of the finger placing portion. Wherein the outer circumference of the thumb wheel 1144 is considered the finger placing portion, the thumb wheel therefore has “only one finger placing portion” because the thumb wheel has only one outer circumference.
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 Alexandra Newton Surgan whose telephone number is (571)270-1618. The examiner can normally be reached Monday-Friday 8am-4pm EST.
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/ALEXANDRA L NEWTON/Primary Examiner, Art Unit 3799
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