DETAILED ACTION
Election/Restrictions
Applicant’s election with traverse of Species A, D and G in the response of 29 December, 2025 is acknowledged.
First the applicant argues the species of set I are not directed to independent or distinct inventions, as they represent alternative implementations of a common inventive concept. This is they differ only in the form of linkage or attachment mechanism, while performing the same function in substantially the same way to obtain the same result [applicant’s arguments of 29 December, 2025, page 3].
The examiner disagrees
The linkage in Species A is one or more solid bars leading to an imaging element displaced distally from the distal end of the endoscope. This results in one or more blocks to visual range, while allowing material to come in between an endoscope imager and the attached imaging element. The linkage in Species B is a transparent cylinder, avoiding blockage of visual range while preventing material to come in between the endoscope imager and the attached imager. The intergral linkage in Species C attaches an auxiliary imaging element proximal to a distal tip of an endoscope, unlike Species A-B. These variations produce substantially different results using substantially different means. As such, this argument is found to be unusually unconvincing.
Next, the applicant argues that the species of set I do not impose a serious search or examination burden, as the same prior art would be relevant to each species. The species in set I fall within the same CPC classification for endoscopes with detachable imaging devices (e.g., A61B1/00). The differences between the species relate only to the mechanical form of the coupling between the imaging element and the attachment and do not require searching different technological fields or materially different prior art. Therefore, examining the Set I species would not impose a significant search burden [applicant’s arguments of 29 December, 2025, page 3].
The examiner disagrees
Even if the species were to fall under the same CPC classification, the species, if claimed strictly enough, would result in different prior art being required. In other words, the species, if claimed strictly enough, could not be used to reject each other. Different prior art, sought via different search terms, would be required for each. Therefore, a serious search burden is present. As such, this argument is found to be unconvincing.
Applicant has indicated traversal of the species requirement of set II (D-F) and set III (G-I), however no specific arguments are present regarding these sets. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant avers that all claims 1, 24 and 33 read on the elected species A, D and G. The examiner disagrees. Claim 24 reads on Species C, as this is the only species where a wireless imaging element is mounted on a proximal end of the attachment and faces away from a distal end of the endoscope insertion tube. As such, claim 24 is hereby withdrawn.
This restriction requirement is hereby made final. Claims 1 and 33 are examined.
Response to Amendment
The amendments to claims 1, 24 and 33 in the response filed on 5 August, 2025 are acknowledged.
Claims 1, 24 and 33 remain pending in the application.
Claim 24 is withdrawn.
Claims 2-23, 25-32 and 34-51 are cancelled.
Claims 1 and 33 are examined.
Claim Objections
Claim 33 is objected to because of the following informalities:
Claim 33 recites “an attachment that detachably attaches the wireless imaging element” where it is apparent the applicant intended to recite functional limitations regarding the attachment rather than the method step provided. This should be written instead as “an attachment configured to detachably attach the wireless imaging element”.
Appropriate correction is required.
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 and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10 and 13 of U.S. Patent No. 8,182,422 (henceforth ‘422). Although the claims at issue are not identical, they are not patentably distinct from each other because:
For claim 1:
Claim 1 ‘422 claim 1, unless noted
A detachable imaging device attachable to a distal end region of an insertion tube of an endoscope, the detachable imaging device comprising:
An endoscope assembly comprising: an insertion tube including a distal end region; a main imaging device on the distal end region of the insertion tube; and a detachable imaging device… the attachment member being connected to the proximal portion of the linking member, the attachment member being configured to detachably engage the imaging device to the insertion tube, …wherein the distal end region of the insertion tube includes a circular groove for receiving the attachment member.
a wireless imaging element; and
an imaging element
‘422 claim 14
wherein the imaging element is a wireless imaging element
and an attachment separated from the wireless imaging element,
the attachment for detachably attaching the wireless imaging element to a distal end region of an insertion tube of an endoscope, and
(in the claim, the linking member separates the two elements: see below)
an attachment member including an inner surface removably frictionally engageable with an outer surface of the distal end region of the insertion tube… the attachment member being configured to detachably engage the imaging device to the insertion tube (this is equivalent to applicant’s attachment member interpreted under 112 (f)
a link that connects the wireless imaging element and the attachment
a linking member including a distal portion and a proximal portion, the distal portion of the linking member being connected to the imaging element…the attachment member being connected to the proximal portion of the linking member
For claim 33:
Claim 33 ‘422 claim 1, unless noted
An endoscope comprising: an insertion tube having a distal end region; and
An endoscope assembly comprising: an insertion tube including a distal end region; a main imaging device on the distal end region of the insertion tube;
a detachable imaging device comprising: a wireless imaging element, and
an imaging element
‘422 claim 14
wherein the imaging element is a wireless imaging element
an attachment that detachably attaches the wireless imaging element to the distal end region of the insertion tube of the endoscope.
an attachment member including an inner surface removably frictionally engageable with an outer surface of the distal end region of the insertion tube… the attachment member being configured to detachably engage the imaging device to the insertion tube (this is equivalent to applicant’s attachment member interpreted under 112 (f)
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim 33 is rejected under 35 U.S.C. 102(a)(1) as anticipated by Whitman (US 2002/0165444).
In regards to Claim 33, Whitman discloses an endoscope [Figs.1, 3a: The imaging device 300 is attached to a distal end of 170, 190, making the device an endoscope. In the alternative, see para.5] comprising:
an insertion tube [170, 180, 185, 190, Figs.1, 3a-b, para.26, 28, 32] having a distal end region [190, Figs.1, 3a-b, para.28, 32]; and
a detachable imaging device [300, para.32] comprising:
a wireless imaging element [315, Figs.3a, 4a, para.32, 36, 38], and
an attachment [305, 310, Figs.3a-b, para.32-33: This item has been interpreted under 112 (f) hereinabove. The cited item is equivalent to applicant’s attachment clip 32, Figs.3 or 8 or 10, configured to encircle the distal end region of the insertion tube and thereby detachably attach the wireless imaging element to the distal end region of the insertion tube.] that detachably attaches the wireless imaging element to the distal end region of the insertion tube of the endoscope [As this is part of the endoscope, this is insertion tube is an endoscope insertion tube. Further, were the applicant to claim an endoscope separately from the detachable imaging device, this would still be an endoscope insertion tube as it is configured to mount the detachable imaging device.].
Response to Arguments
Rejection under 35 U.S.C. 102 (b) as anticipated by Whitman (US 2002/0165444).
Argument:
In regards to the amended claim 33, the applicant argues that Whitman does not disclose an insertion tube of an endoscope, as Whitman instead discloses a surgical instrument [in the applicant's arguments dated 5 August, 2025, pages 7-8].
Response:
The examiner respectfully disagrees.
In claim 33, the applicant requires an endoscope which comprises both the insertion tube and the detachable imaging device. The applicant has not required that the insertion tube be part of a complete endoscope separately from the detachable imaging device. As such, as the insertion tube of Whitman forms an endoscope together with the detachable imaging device, the insertion tube is therefore an endoscope insertion tube.
Allowable Subject Matter
Claim 1 would be allowable if rewritten to overcome the double patenting rejection set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: The prior art fails to teach, among other features, a detachable imaging device attachable to a distal end region of an insertion tube of an endoscope, the detachable imaging device comprising:
a wireless imaging element, an attachment (which is applicant’s attachment clip 32, Figs.3 or 8 or 10, configured to encircle the distal end region of the insertion tube and thereby detachably attach the wireless imaging element to the distal end region of the insertion tube, or equivalent thereof. This is 112 (f) interpretation of the term “attachment”) and a link,
the link connecting the wireless imaging element and the attachment,
the attachment separated from the wireless imaging element, the attachment for detachably attaching the wireless imaging element to the distal end region of the insertion tube.
Whitman (US 2002/0165444) discloses the above except for the link, and the attachment being separated from the wireless imaging element.
Irion (US 5,166,787) discloses an imaging element attached by a link beyond the distal end of an insertion portion of an endoscope.
Sano et al. (US 2002/0022763) discloses the above except for the specifics of the attachment
Ratnakar (US 2005/0038317) discloses an imaging element attached by a link beyond the distal end of an insertion portion of an endoscope.
There is no reason or suggestion provided in the prior art to modify the above prior art to have the additional features as claimed above, and the only reason to modify the references would be based on Applicant's disclosure, which is impermissible hindsight reasoning.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection (altered interpretation of art) 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 AARON B FAIRCHILD whose telephone number is (571)270-5276. The examiner can normally be reached 8:30am-5pm Monday-Friday.
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.
/AARON B FAIRCHILD/Primary Examiner, Art Unit 3795
Prosecution Insights