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 1-10 are pending.
Claims 1-5 & 8-10 are rejected.
Claims 6-7 are objected to.
Claim Objections
Claims 3, 6 & 10 are objected to because of the following informalities:
Regarding Claim 3, Claim 3 recites the limitation “the light emitters” on Line 6. Examiner kindly requests Applicant amend this limitation to read “the plurality of light emitters” to provide consistent claim language throughout.
Regarding Claim 6, Claim 6 recites the limitation “an outer surface permanent magnet is one enclosed curved surface” on Lines 7-8. This is grammatically incorrect. Appropriate correction is required.
Regarding Claim 10, Claim 10 recites the limitation “the light emitters” on Line 7. Examiner kindly requests Applicant amend this limitation to read “the plurality of light emitters” to provide consistent claim language throughout.
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(s) 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:
"the light-guiding structure... configured to enable the lights therein to be mixed and pass therethrough" in Claim 3, as described in Para. [0029] – [0031] of Applicant’s specification.
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(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 8, Claim 8 recites the limitation “an outer surface of the permanent magnet [emphasis added]” on Line 6. It is unclear whether this “outer surface” is the same as the “outer surface [of] the permanent magnet” previously recited on Lines 7-8 of Claim 6 or a separate, different outer surface. For the purpose of examination, “an outer surface of the permanent magnet” is being interpreted as “the outer surface of the permanent magnet [emphasis added]”.
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.
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 1-5 & 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Gilad et al. (hereinafter "Gilad") (US 2006/0004256) in view of Alexander et al. (hereinafter "Alexander") (US 2013/0204085).
Regarding Claim 1, Gilad discloses an endoscope system (Fig. 1B, an endoscope system comprising 100B, an external receiver (not shown) and an external system (not shown); [0023] – [0024] & [0034]), comprising:
a capsule endoscope (Fig. 1B, 100B; [0034]) provided for being placed into and movable in a biological body (Fig. 3, 120; [0037]), wherein the capsule endoscope includes:
a capsule shell (a shell; see Fig. 1B) having a light-guiding structure (Figs. 1B & 3, 108; [0034]) and an observation end portion (Fig. 3, 102; [0034]), wherein the capsule shell has a light input surface (a perpendicularly-oriented input surface; see Figs. 1B & 3) and a light output surface (a parallelly-oriented emission surface; see Figs. 1B & 3) that is opposite to the light input surface (see Fig. 3), and the observation end portion corresponds in position to the light output surface (see Fig. 3);
a wireless module (Fig. 1B, 122; [0034]) arranged inside of the light-guiding structure (see Fig. 1B);
a camera module (Fig. 1B, 107; [0034]) arranged inside of the light-guiding structure (see Fig. 1B) and facing toward the observation end portion (Fig. 1B, 107 is directed toward 104 disposed in 102; [0029] & [0034]); and
a light emitting diode LED module (Fig. 1B, an LED module comprising a plurality of 110 wherein 110 are LEDs; [0034] & [0037]) arranged inside of the light- guiding structure (see Fig. 1B) and facing toward the light input surface (see Figs. 1B & 3), wherein the LED module and the camera module are respectively located at two opposite sides of the wireless module (see Fig. 1B), and wherein the LED module is configured to emit light that travels into the light-guiding structure by passing through the light input surface ([0037]), and the light-guiding structure is configured to enable the light therein to travel onto and pass through the light output surface for scattering toward the observation end portion ([0037]);
a signal processing device (an external system; [0024]) electrically coupled to the capsule endoscope ([0024]); and
a wireless controller (an external receiver (not shown); [0023]) being not in contact with the capsule endoscope ([0023]), wherein the wireless controller is outside of the biological body ([0023]).
Gilad fails to explicitly disclose wherein the wireless module is a magnetic attraction member; and wherein the wireless controller is configured to generate a magnetic field to control the magnetic attraction member of the capsule endoscope located in the biological body from outside of the biological body.
However, Alexander teaches an endoscope system (Fig. 15, 1500; [0145]), comprising:
a capsule endoscope (Fig. 15, 1507; [0145]) provided for being placed into and movable in a biological body (see Fig. 15), wherein the capsule endoscope includes:
a magnetic attraction member (Fig. 15, 1508; [0145]);
a camera module (Fig. 15, 1510; [0145]); and
a light emitting diode LED module (Fig. 15, 1512 wherein 1512 is an LED; [0069] & [0145]);
a signal processing device (Fig. 15, 1516; [0145]) electrically coupled to the capsule endoscope ([0146]); and
a wireless controller (Fig. 15, 1502; [0145]) being not in contact with the capsule endoscope (see Fig. 15), wherein the wireless controller is configured to generate a magnetic field (Fig. 15, 1502 has 1506 which generates a magnetic field; [0146]) to control the magnetic attraction member of the capsule endoscope located in the biological body from outside of the biological body ([0146]).
The advantage of the wireless module being magnetic is to better control and position the capsule endoscope (Alexander; [0149]).
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 wireless module as disclosed by Gilad, to be magnetic, as taught by Alexander, to better control and position the capsule endoscope (Alexander; [0149]).
Regarding Claim 2, Gilad, as previously modified by Alexander, teaches the endoscope system according to Claim 1. Alexander further teaches a cable connector (Fig. 15, 1514; [0145]), wherein an end of the cable connector is connected to the capsule endoscope (see Fig. 15) and is arranged adjacent to the LED module (see Fig. 15), and another end of the cable connector is connected to the signal processing device (see Fig. 15).
Regarding Claim 3, Gilad, as previously modified by Alexander, teaches the endoscope system according to Claim 1. Gilad further discloses wherein each of the light input surface and the light output surface is in an annular shape (see Fig. 1B), and a normal vector of the light input surface is non-parallel to a normal vector of the light output surface (see Figs. 1B & 3), and wherein the LED module includes a plurality of light emitters spaced apart from each other (see Fig. 1B) and being in an annular arrangement (see Fig. 1B), and the light emitters are configured to emit lights traveling into the light-guiding structure by passing through the light input surface, and the light-guiding structure is configured to enable the lights therein to be mixed and to pass therethrough from the light output surface ([0037]).
Regarding Claim 4, Gilad, as previously modified by Alexander, teaches the endoscope system according to Claim 3. Gilad further discloses wherein the capsule shell defines a central axis being perpendicular to the normal vector of the light input surface and being parallel to the normal vector of the light output surface (see Fig. 1B), and the camera module, the magnetic attraction member, and the LED module are arranged along the central axis (see Fig. 1B).
Regarding Claim 5, Gilad, as previously modified by Alexander, teaches the endoscope system according to Claim 1. Gilad further discloses wherein the capsule shell includes a reflective housing accommodating the light-guiding structure therein ([0037]), and an inner surface of the reflective housing is a reflective surface arranged adjacent to an outer surface of the light-guiding structure ([0037]).
Regarding Claim 9, Gilad discloses a capsule endoscope (Fig. 1B, 100B; [0034]) provided for being placed into and movable in a biological body (Fig. 3, 120; [0037]), the capsule endoscope comprising:
a capsule shell (a shell; see Fig. 1B) having a light-guiding structure (Figs. 1B & 3, 108; [0034]) and an observation end portion (Fig. 3, 102; [0034]), wherein the capsule shell has a light input surface (a perpendicularly-oriented input surface; see Figs. 1B & 3) and a light output surface (a parallelly-oriented emission surface; see Figs. 1B & 3) that is opposite to the light input surface (see Fig. 3), and the observation end portion corresponds in position to the light output surface (see Fig. 3);
a wireless module (Fig. 1B, 122; [0034]) arranged inside of the light-guiding structure (see Fig. 1B);
a camera module (Fig. 1B, 107; [0034]) arranged inside of the light-guiding structure (see Fig. 1B) and facing toward the observation end portion (Fig. 1B, 107 is directed toward 104 disposed in 102; [0029] & [0034]); and
a light emitting diode LED module (Fig. 1B, an LED module comprising a plurality of 110 wherein 110 are LEDs; [0034] & [0037]) arranged inside of the light- guiding structure (see Fig. 1B) and facing toward the light input surface (see Figs. 1B & 3), wherein the LED module and the camera module are respectively located at two opposite sides of the wireless module (see Fig. 1B), and wherein the LED module is configured to emit light that travels into the light-guiding structure by passing through the light input surface ([0037]), and the light-guiding structure is configured to enable the light therein to travel onto and pass through the light output surface for scattering toward the observation end portion ([0037]).
Gilad fails to explicitly disclose wherein the wireless module is a magnetic attraction member.
However, Alexander teaches a capsule endoscope (Fig. 15, 1507; [0145]) provided for being placed into and movable in a biological body (see Fig. 15), the capsule endoscope comprising:
a magnetic attraction member (Fig. 15, 1508; [0145]);
a camera module (Fig. 15, 1510; [0145]); and
a light emitting diode LED module (Fig. 15, 1512 wherein 1512 is an LED; [0069] & [0145]);
a signal processing device (Fig. 15, 1516; [0145]) electrically coupled to the capsule endoscope ([0146]).
The advantage of the wireless module being magnetic is to better control and position the capsule endoscope (Alexander; [0149]).
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 wireless module as disclosed by Gilad, to be magnetic, as taught by Alexander, to better control and position the capsule endoscope (Alexander; [0149]).
Regarding Claim 10, Gilad, as previously modified by Alexander, teaches the capsule endoscope according to Claim 9. Gilad further discloses wherein the capsule shell defines a central axis (see Fig. 1B), any one of the light input surface and the light output surface is in an annular shape having a center located on the central axis (see Fig. 1B), and a normal vector of the light input surface is non-parallel to a normal vector of the light output surface (see Figs. 1B & 3), and wherein the LED module includes a plurality of light emitters spaced apart from each other (see Fig. 1B) and being in an annular arrangement (see Fig. 1B), and the light emitters are configured to emit lights that travel into the light-guiding structure by passing through the light input surface, and the light-guiding structure is configured to enable the lights therein to be mixed and to pass therethrough from the light output surface ([0037]).
Allowable Subject Matter
Claims 6-7 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.
Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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 6, Gilad, as previously modified by Alexander, teaches the endoscope system according to Claim 1. Alexander further teaches wherein the wireless controller includes:
a handle having a grip portion (Fig. 15, 1504; [0145]) and a controlling portion that is connected to the grip portion (Fig. 15, a surface contact (not labeled but identical to elements 1308 and 1403 in Figs. 13 & 14, respectively); [0127] & [0138]); and
a permanent magnet (Fig. 15, 1506, wherein 1506 is a permanent magnet; [0028] & [0145]) being assembled in the controlling portion (see Fig. 15), wherein the permanent magnet is configured to generate the magnetic field (Fig. 15, 1506 is magnet and inherently generates a magnetic field; [0146]).
Gilad, Alexander, nor other piece of prior art, alone or in combination, discloses, teaches or suggests wherein the permanent magnet has a non-columnar shape, an outer surface of the permanent magnet is one enclosed curved surface, and wherein the permanent magnet is mirror symmetrical across a largest cross section thereof, and wherein a volume of the permanent magnet gradually decrease from the largest cross section along two opposite directions perpendicular to the largest cross section.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Schostek et al. (US 2022/0354349) teaches an endoscope capsule system with haptic feedback.
Ben-Arye (US 2020/0214543) teaches a disposable miniature endoscopy system.
De Asis (WO 2019/070137) teaches a magnetically maneuverable laparoscopic camera system.
Wu et al. (US 2017/0347864) teaches an auxiliary device for a capsule endoscope.
Ghabrial et al. (US 2010/0152539) teaches a positionable imaging medical device.
Hengerer et al. (US 2009/0312618) teaches a capsule endoscopic device with a biochip sensor.
Liu et al. (US 2009/0012363) teaches a capsule endoscope and magnetic field control method thereof.
Youmans et al. (US 2008/0167546) teaches a tether-secured scanner device.
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/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795