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
Newly submitted independent claim 22 is directed to an invention that is independent or distinct from the previously presented independent claim 1.
Claim 22 recites a system configured for illuminating an object to be observed during a medical intervention with non-visible illumination light in a first wavelength range, the system comprising: a converter which converts the non-visible illumination light into an indication signal that is perceivable by humans, wherein the indication signal is at least one of:
an acoustic indication signal; or a mechanical indication signal.
A converter which converts the non-visible illumination light into an acoustic indication signal that is perceivable by humans is a mutually exclusive feature with respect to a converter which converts the non-visible illumination light into a visual indication signal that is perceivable by humans. The scope of the features recited in these claims are distinct because acoustic indicator requires a different structure and a sensor (that can receive a non-visible illumination light and convert into an acoustic signal.) with device as compared to the visual indicator.
Accordingly, claim 22 has been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 808.01(a); 821.03; 806.04(f).
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Amendment
The amendment filed on 2/19/2026 has been entered. Claims 1-2, 4-12, 14-15, 19-21 are pending. Claims 3, 13, 17, are cancelled. Claims 16, 18, 22-24 are withdrawn from consideration. Applicant’s amendment to the claims have overcome 112 rejections and objections previously set forth in the Non-Final Office Action notified on 8/28/2025.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2, 4-8, 10-12, 14-15, 19-21, is/are rejected under 35 U.S.C. 102 as being anticipated by Steiner (US 20200337525).
Regarding claim 1, Steiner discloses a system (FIGS. 1, 4 annotated below) configured for illuminating an object to be observed during a medical intervention with non-visible illumination light in a first wavelength range (near-infrared light for fluorescent generation), the system comprising:
a converter (fluorescent indicator 102 ) which converts at least some of the non-visible illumination light into an optical indication signal in the form of visible indication light that is perceivable by humans (fluorescent indicator 102 is back-lit by the excitation light 12a, from, for example, a fiber optic channel, when the user enters the fluorescence imaging mode of the system; Para [0020]); and
an endoscope (FIG. 1; an endoscope for imaging a fluorescent agent in a patient; para [0003]), the non-visible illumination light is emitted from a distal end region (near-infrared light for fluorescent generation; FIG. 1) of the endoscope and the indication signal is emitted at least one of:
from a proximal end (Fluorescent indicator 102 is positioned at the proximal side; FIGS. 2A-2D; The fluorescent indicator may be indocyanine green; para [0003]; FIG. 2B annotated below.) of the endoscope: or
in a direction perpendicular to or opposite to a direction in which the non-visible illumination light is emitted from the distal end region.
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Regarding claim 2, Steiner discloses wherein the converter outputs the indication signal only if the non-visible illumination light is present (The fluorescent indicator may be indocyanine green and the first light source may have an excitation wavelength in the near infrared. Para [0003]).
Regarding claim 4, Steiner discloses wherein the converter is configured to convert the at least some of the illumination light into the visible indication light based on a photoactive substance (The fluorescent indicator may be indocyanine green; para [0003]) which enables optical wavelength conversion of the illumination light into the indication light without an external energy supply.
Regarding claim 5, Steiner discloses wherein the converter comprises a photoactive conversion material (The fluorescent indicator may be indocyanine green which requires a photoactive conversion material; para [0003), and the conversion material is applied as a conversion layer on a carrier body (FIGS. 1, 2A-2D).
Regarding claim 6, Steiner discloses wherein the conversion material contains a photoactive substance applied on a ceramic as the carrier body (Note the carrier body in FIG. 1; Also see, FIGS. 2A-2D).
Regarding claim 7, Steiner discloses wherein the illumination light is at least one of reflected or transmitted by the converter (The illumination light is transmitted via the indicator 102; FIGS. 1, 2A-2D).
Regarding claim 8, Steiner discloses wherein the converter , upon the conversion of the non-visible illumination light into the visible indication light, is configured to effect conversion from longer wavelengths to shorter wavelengths (Infrared light is transformed to indocyanine green. Para [0003]).
Regarding claim 10, Steiner discloses wherein the converter (FIGS. 1, 2A-2D) is arranged in an interior space of the system and the indication light is embedded in the window (FIGS. 2A-2D), and the non-visible illumination light passes through the window before becoming incident on the conversion material (FIGS. 1, 2A-2D).
Regarding claim 11, Steiner discloses wherein the converter is arranged in a housing (FIG. 1) that surrounds a light guide (Note the light guide in FIG. 1), which propagates the invisible illumination light to an illumination optical unit.
Regarding claim 12, Steiner discloses wherein the converter is arranged such that the converter is located extracorporeally (FIG. 1) when the visualization and/or illumination system is used.
Regarding claim 14, Steiner discloses an internal light guide (FIG. 1) forming a branch which branches off some of the illumination light from an optical main path used for the illumination and the branch guides some of the illumination light to the converter (Light guide is branched off; FIG. 1).
Regarding claim 15, Steiner discloses wherein the system comprises an endoscope (FIG.1), an exoscope, a microscope or an illumination optical unit.
Regarding claim 19, Steiner discloses a light source configured to emit the illumination light (Visible light source 13) and arranged in an interior space (FIG. 1), and a light guide arranged in the interior space (FIG.1) and configured to guide the illumination light to the converter (Indicator 102; FIG. 1).
Regarding claim 20, Steiner discloses wherein the light source is arranged in a distal end region of the endoscope (Visible light source 13 is propagated to the distal end and exit out of the distal end. ) and the light guide propagates the illumination light in a direction towards the proximal end of the endoscope (The illumination light such as near infrared is propagated towards the proximal end for fluorescence mode. FIGS. 1, 2A-2C).
Regarding claim 21, Steiner discloses wherein the non-visible illumination light is emitted from the endoscope is an excitation light (The first light source may have an excitation wavelength in the near infrared. Para [0016]) being used for optical excitation of a fluorophore for the purpose of fluorescence imaging (Fluorescent indicator 102 is back-lit by the excitation light 12a, from, for example, a fiber optic channel, when the user enters the fluorescence imaging mode of the system; Para [0020]).
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steiner (US 20200337525) in view of Mizuyoshi (US 20090306478).
Regarding claim 9, Steiner does not expressly disclose wherein the converter, upon the conversion of the non-visible illumination light into the visible indication light, is configured to effect conversion from shorter wavelengths to longer wavelengths.
Mizuyoshi is directed to illumination device for use in an endoscope (abstract) and teaches wherein the converter, upon the conversion of the non-visible illumination light into the visible indication light, is configured to effect conversion from shorter wavelengths to longer wavelengths (Near ultraviolet light is irradiated; Para [0154]; The second wavelength conversion member which also constitutes the wavelength conversion member 145 made of a down-conversion material which absorbs the laser beam from the near-ultraviolet laser light source 135 and is excited to emit green light. Para [0152]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mizuyoshi to have conversion from a shorter wavelength to a longer wavelength so that higher energy light such as ultraviolet light could be used for illumination and treatment during surgery.
Response to Arguments
Applicant’s arguments submitted on 2/29/2026 have been fully considered and are persuasive. Therefore, the rejection dated 8/28/2025 have been withdrawn. However, upon further consideration, a new rejection has been made in view of amendment. See rejection set forth above.
Conclusion
THIS ACTION IS MADE FINAL. 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 SHANKAR R GHIMIRE whose telephone number is (571)272-0515. The examiner can normally be reached 8 AM - 5 PM.
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, 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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/SHANKAR RAJ GHIMIRE/Examiner, Art Unit 3795
/ANH TUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
03/23/26