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 .
Response to Amendment
The amendment filed on 11/7/2025 has been entered. Claims 1-20 remain pending in the application.
On pages 8-9 of applicant’s arguments, filed on 11/7/2025, Applicant asserts that claims 9 and 11 have been amended to recite “the at least one working channel.” However, claims 9 and 11, in the amendment filed on 11/7/2025, does not reflect this. The examiner believes the discrepancy is due to possible oversight. Accordingly, the 112(b) rejection to claims 9 and 11 set forth in the Non-Final Office Action mailed 7/22/2025 stands. Please see section 35 USC § 112 below for further explanation.
On pages 8-9 of applicant’s arguments, filed on 11/7/2025, Applicant asserts that claims 3, 9, and 15 have been amended to recite “the cartridge tool.” However, claims 3, 9, and 15, in the amendment filed on 11/7/2025, does not reflect this. The examiner believes the discrepancy is due to possible oversight. Accordingly, the 112(b) rejection to claims 3, 9, and 15 set forth in the Non-Final Office Action mailed 7/22/2025 stands. Please see section 35 USC § 112 below for further explanation.
With the exception of the aforementioned 112(b) rejections, Applicant’s amendments to the Specification and Claims have overcome each and every objection and 112 rejection previously set forth in the Non-Final Office Action mailed 7/22/2025. The claim interpretations being interpreted under 112(f) presented in the Non-Final Office Action mailed 7/22/2025 have been withdrawn in light of the Applicant’s amendments.
Response to Arguments
Applicant’s arguments, see pages 9-11, filed 11/7/2025, with respect to the rejection under 35 USC § 102 of Claims 1, 9, and 15, have been fully considered and are persuasive in light of Applicant’s amendments. Applicant amended the independent claim with newly added limitations. Such newly added limitations change the scope of the claims, render the previous 102 rejections identified in the non-final dated 7/22/2025 moot, and require a new ground of rejection.
Therefore, the 102 rejections previously identified in the non-final action dated 7/22/2025 have been withdrawn.
However, upon further search and consideration, a new ground of rejection is made. Please see section 35 USC § 102 below for further explanation.
Claim Objections
Claims 1, 9, and 15 are objected to because of the following informalities:
In claim 1, line 4, claim 9, line 3, and claim 15, line 3, “configured to mateably dock a body of a cartridge tool” should read “configured to detachably dock to a body of at least one cartridge tool.” Examiner notes that if applicant chooses to use “at least one cartridge tool” all future references of the cartridge tool must be recited as “the at least one cartridge tool” to avoid potential 112(b) issues arising from a lack of antecedent basis.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 3 and 9-20 are 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.
Claim 3 recites the limitation “a cartridge tool” in line 3. It is unclear if applicant is referring to the cartridge tool introduced previously in claim 1 or an additional cartridge tool. For the purposes of examination, “a cartridge tool” is being interpreted as “the cartridge tool.”
Claim 9 recites the limitation “a cartridge tool” in line 9. It is unclear if applicant is referring to the cartridge tool introduced previously in claim 9 or an additional cartridge tool. For the purposes of examination, “a cartridge tool” is being interpreted as “the cartridge tool.”
Claims 9 and 11 recite the limitation "the working channel" in l. 10 of claim 9 and l. 4 of claim 11. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, "the working channel" is being interpreted as "the at least one working channel."
Claim 12 recites the limitation "the cartridge" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, "the cartridge" is being interpreted as "the cartridge tool."
Claim 15 recites the limitation “a cartridge tool” in lines 6 and 8. It is unclear if applicant is referring to the cartridge tool introduced previously in claim 15 or an additional cartridge tool. For the purposes of examination, “a cartridge tool” is being interpreted as “the cartridge tool.”
Claim 15 recites the limitation “a body of the cartridge tool” in line 9. It is unclear if applicant is referring to the body of the cartridge tool introduced previously in claim 15 or an additional body of the cartridge tool. For the purposes of examination, “a body of the cartridge tool” is being interpreted as “the body of the cartridge tool.”
Claim 15 recites the limitation “a distal elongated portion of the cartridge tool” in lines 8-9. It is unclear if applicant is referring to the elongated distal portion of the cartridge tool introduced previously in claim 15 or an additional elongated distal portion of the cartridge tool. For the purposes of examination, “a distal elongated portion of the cartridge tool” is being interpreted as “the elongated distal portion of the cartridge tool.”
Claims 10, 13-14, and 16-20 are rejected as being dependent upon claims previously rejected under 35 USC § 112(b).
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 6-10, 12-13, 14, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Appl. Publ. No. 2005/0209505 A1 to Okada (“Okada”).
Regarding claim 1, Okada discloses a cystoscope (endoscope 12; Fig. 1A, paragraph 0046) comprising:
a handle (operating portion 17; Fig. 1A, paragraph 0047);
an elongated shaft that defines at least one working channel (the endoscope 12 has a channel 7 through which a treatment instrument head 6 can pass; Fig. 1A, paragraph 0047);
a repository configured to mateably dock a body of a cartridge tool (the endoscope 12 is provided with an instrument opening 16 for use in attaching or detaching the treatment instrument head 6 to or from the treatment instrument driving mechanism 11 at a proximal end of the channel 7; Fig. 1A, paragraph 0051) and provide access to the at least one working channel for an elongated distal portion of the cartridge tool (the endoscope 12 has a channel 7 through which a treatment instrument head 6 can pass; Fig. 2-3, paragraph 0047); and
a first control for actuating a movable element of the repository (a driving portion 27 is coupled to and selectively rotates the roller 26, in opposite directions, responsive to a control signal from a switch 28 arranged in the operating portion 17; Fig. 1A, paragraph 0055), the movable element of the repository comprising a slider portion (supporting shaft 40; Fig. 2, paragraph 0057) having a protuberance extending therefrom (the head 41 is arranged at a distal end of supporting shaft 40; Fig. 2, paragraph 0057), wherein the protuberance is configured to engage the cartridge tool when docked within the repository (the head 41 is able to protrude via the through hole 30 of the first connecting member 31 with the central axis C1 of the treatment instrument head 6 perpendicular to the central axis C2 of the treatment instrument driving mechanism 11; Fig. 2-3, paragraph 0057) and thereby implement a functionality of the cartridge tool when the first control is actuated (the operator drives the driving portion 27 by operating the switch 28 again to move the treatment instrument driving mechanism 11 toward the distal end of the channel 7, where the treatment instrument head 6 protrudes from the channel 7 and is able to carry out a given treatment; Fig. 1A, paragraph 0068).
Regarding claim 6, Okada discloses the cystoscope according to claim 1. Okada further discloses wherein the repository comprises a recess (instrument opening 16; Fig. 3) such that at least a portion of the cartridge tool is within a profile of the handle when the cartridge tool is docked within the repository (the treatment instrument head 6 is within the profile of operating portion 17 when docked inside the instrument opening 16; Fig. 3).
Regarding claim 7, Okada discloses the cystoscope according to claim 1. Okada further discloses comprising at least one cartridge tool (treatment instrument head 6; Fig. 1A, paragraph 0047), wherein the at least one cartridge tool has an elongated distal portion configured to extend into the at least one working channel (first flexible sheath tube portion 3; Fig. 1A and 3, paragraph 0046) and has a body that releasably attaches to the repository (the first engagement mechanism 13 has the first connecting member 31 on the side of the treatment instrument head 6 and the second connecting member 33 on the side of the treatment instrument driving mechanism; Fig. 2-3, paragraph 0056 and 0069-0070).
Regarding claim 8, Okada discloses the cystoscope according to claims 1 and 7. Okada further discloses wherein the at least one cartridge tool has a movable element that is engaged by the protuberance of the movable element of the repository when the at least one cartridge tool is docked within the repository (the head 41 is able to protrude via the through hole 30 of the first connecting member 31; Fig. 2-3, paragraph 0057) such that manipulation of the first control implements the functionality of the at least one cartridge tool (the operator drives the driving portion 27 by operating the switch 28 again to move the treatment instrument driving mechanism 11 toward the distal end of the channel 7, where the treatment instrument head 6 protrudes from the channel 7 and is able to carry out a given treatment; Fig. 1A, paragraph 0068).
Regarding claim 9, Okada discloses a cystoscope system (an endoscopic treatment instrument system 1; Fig, 1A, paragraph 0046) comprising:
a cystoscope having a handle (operating portion 17; Fig. 1A, paragraph 0047), an elongated shaft that defines at least one working channel (the endoscope 12 has a channel 7 through which a treatment instrument head 6 can pass; Fig. 1A, paragraph 0047), a repository configured to mateably dock a body of a cartridge tool (the endoscope 12 is provided with an instrument opening 16 for use in attaching or detaching the treatment instrument head 6 to or from the treatment instrument driving mechanism 11 at a proximal end of the channel 7; Fig. 1A, paragraph 0051) and provide access to the at least one working channel for an elongated distal portion of the cartridge tool (the endoscope 12 has a channel 7 through which a treatment instrument head 6 can pass; Fig. 2, paragraph 0047) and a first control for actuating a movable element of the repository (a driving portion 27 is coupled to and selectively rotates the roller 26, in opposite directions, responsive to a control signal from a switch 28 arranged in the operating portion 17; Fig. 1A, paragraph 0055), the movable element of the repository comprising a slider (supporting shaft 40; Fig. 2, paragraph 0057) having a protuberance (the head 41 is arranged at a distal end of supporting shaft 40; Fig. 2, paragraph 0057), wherein the protuberance is configured to engage the cartridge tool when docked within the repository (the head 41 is able to protrude via the through hole 30 of the first connecting member 31 with the central axis C1 of the treatment instrument head 6 perpendicular to the central axis C2 of the treatment instrument driving mechanism 11; Fig. 2-3, paragraph 0057) and thereby implement a functionality of the cartridge tool when the first control is actuated (the operator drives the driving portion 27 by operating the switch 28 again to move the treatment instrument driving mechanism 11 toward the distal end of the channel 7, where the treatment instrument head 6 protrudes from the channel 7 and is able to carry out a given treatment; Fig. 1A, paragraph 0068); and
a cartridge tool (treatment instrument head 6; Fig. 1A, paragraph 0047), wherein the cartridge tool has an elongated distal portion configured to extend into the working channel (first flexible sheath tube portion 3; Fig. 1A and 3, paragraph 0046) and has a body that releasably attaches to the repository (the first engagement mechanism 13 has the first connecting member 31 on the side of the treatment instrument head 6 and the second connecting member 33 on the side of the treatment instrument driving mechanism; Fig. 2-3, paragraph 0056 and 0069-0070).
Regarding claim 10, Okada discloses the cystoscope system according to claim 9. Okada further discloses wherein the cartridge tool has a movable element that is engaged by the protuberance of the movable element of the repository when the cartridge tool is docked within the repository (the head 41 is able to protrude via the through hole 30 of the first connecting member 31; Fig. 2-3, paragraph 0057) such that manipulation of the first control implements the functionality of the cartridge tool (the operator drives the driving portion 27 by operating the switch 28 again to move the treatment instrument driving mechanism 11 toward the distal end of the channel 7, where the treatment instrument head 6 protrudes from the channel 7 and is able to carry out a given treatment; Fig. 1A, paragraph 0068).
Regarding claim 12, Okada discloses the cystoscope system according to claim 9. Okada further discloses wherein the cartridge is selected from a plurality of cartridge tools (treatment instrument head 6; Fig. 1A, paragraph 0047), each of the cartridge tools having an elongated distal portion configured to extend into the working channel (first flexible sheath tube portion 3; Fig. 1A and 3, paragraph 0046) and having a body that releasably attaches to the repository (the first engagement mechanism 13 has the first connecting member 31 on the side of the treatment instrument head 6 and the second connecting member 33 on the side of the treatment instrument driving mechanism; Fig. 2-3, paragraph 0056 and 0069-0070).
Regarding claim 13, Okada discloses the cystoscope system according to claims 9 and 12. Okada further discloses wherein at least two of the plurality of cartridge tools have different functionalities (an operator can handle a plurality of treatment instruments using a single treatment instrument driving mechanism by preparing a plurality of treatment instrument heads and replacing them one after another, thereby avoiding the burden of having to handle long treatment instruments for each step; paragraph 0021).
Regarding claim 15, Okada discloses a method of employing a cystoscope comprising:
providing a cystoscope (endoscope 12; Fig. 1A, paragraph 0046) having a handle (operating portion 17; Fig. 1A, paragraph 0047), an elongated shaft that defines at least one working channel (the endoscope 12 has a channel 7 through which a treatment instrument head 6 can pass; Fig. 1A, paragraph 0047), a repository configured to mateably dock a body of a cartridge tool (the endoscope 12 is provided with an instrument opening 16 for use in attaching or detaching the treatment instrument head 6 to or from the treatment instrument driving mechanism 11 at a proximal end of the channel 7; Fig. 1A, paragraph 0051) and provide access to the at least one working channel for an elongated distal portion of the cartridge tool (the endoscope 12 has a channel 7 through which a treatment instrument head 6 can pass; Fig. 2, paragraph 0047) and a first control for actuating a movable element of the repository (a driving portion 27 is coupled to and selectively rotates the roller 26, in opposite directions, responsive to a control signal from a switch 28 arranged in the operating portion 17; Fig. 1A, paragraph 0055), the movable element comprising a slider (supporting shaft 40; Fig. 2, paragraph 0057) having a protuberance that is configured to engage a cartridge tool docked within the repository (the head 41 is able to protrude via the through hole 30 of the first connecting member 31 with the central axis C1 of the treatment instrument head 6 perpendicular to the central axis C2 of the treatment instrument driving mechanism 11; Fig. 2-3, paragraph 0057);
docking a cartridge tool with the cystoscope such that a distal elongated portion of the cartridge tool extends through the at least one working channel (first flexible sheath tube portion 3; Fig. 1A and 3, paragraph 0046) and a body of the cartridge tool releasably attaches within the repository (the first engagement mechanism 13 has the first connecting member 31 on the side of the treatment instrument head 6 and the second connecting member 33 on the side of the treatment instrument driving mechanism; Fig. 2-3, paragraph 0056 and 0069-0070), wherein docking the cartridge tool causes the protuberance of the movable element of the repository to engage the cartridge tool (the head 41 is able to protrude via the through hole 30 of the first connecting member 31; Fig. 2-3, paragraph 0057); and
actuating the first control to implement a functionality of the cartridge tool (the operator drives the driving portion 27 by operating the switch 28 again to move the treatment instrument driving mechanism 11 toward the distal end of the channel 7, where the treatment instrument head 6 protrudes from the channel 7 and is able to carry out a given treatment; Fig. 1A, paragraph 0068).
Regarding claim 19, Okada discloses the method according to claim 15. Okada further discloses wherein the cartridge tool has a movable element that is engaged by the protuberance movable element of the repository when the cartridge tool is docked within the repository (the head 41 is able to protrude via the through hole 30 of the first connecting member 31; Fig. 2-3, paragraph 0057) such that manipulation of the first control implements the functionality of the cartridge tool (the operator drives the driving portion 27 by operating the switch 28 again to move the treatment instrument driving mechanism 11 toward the distal end of the channel 7, where the treatment instrument head 6 protrudes from the channel 7 and is able to carry out a given treatment; Fig. 1A, paragraph 0068).
Regarding claim 20, Okada discloses the method according to claim 15. Okada further discloses comprising exchanging the cartridge tool with a different cartridge tool (an operator can handle a plurality of treatment instruments using a single treatment instrument driving mechanism by preparing a plurality of treatment instrument heads and replacing them one after another, thereby avoiding the burden of having to handle long treatment instruments for each step; paragraph 0021).
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.
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 2-3, 11, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Okada in view of U.S. Patent Appl. Publ. No. 2015/0065807 A1 to Greenberg et al. (“Greenberg”).
Regarding claim 2, Okada discloses the cystoscope according to claim 1. However, Okada does not explicitly teach further comprising an irrigation port in fluid communication with the at least one working channel, wherein the irrigation port is separate from the repository.
Greenberg teaches an irrigation port in fluid communication with the working channel (fluid inflow port 2108 [is] in fluid communication with a single central lumen 2105; Fig. 21A-D, #2108, paragraph 0072), wherein the irrigation port is separate from repository (the proximal portion 2170 of catheter 2100 comprises a central port 2102 for insertion therethrough of … a cystoscope and/or another instrument; Fig. 21A-C, #2102, paragraph 0072). Greenberg teaches that a 4-way cystoscopy catheter with an irrigation port separate from the repository allows for a procedure which requires both irrigation and treatment with a treatment tool to be performed without needing to remove the original Folley catheter (paragraph 0014).
Greenberg is considered to be analogous to the claimed invention because it is in the same field of endoscopes with repositories configured to receive an instrument tool. It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the handle of Okada to incorporate the teachings of Greenberg by adding an irrigation port in fluid communication with the working channel and separate from the repository. Doing so would allow for a procedure which requires both irrigation and treatment with a treatment tool to be performed without needing to remove the original Folley catheter, as recognized by Greenberg.
Regarding claim 3, Okada, as previously modified by Greenberg, teaches the cystoscope according to claims 1-2. Greenberg further teaches wherein the repository comprises a seal configured to restrict egress of irrigation fluid from the at least one working channel when a cartridge tool is docked within the repository (the central port 2102 may comprised a seal or one-way valve … the seal may also be utilized to keep the central port 2102 from leaking when a cystoscope and/or another instrument is inserted therethrough; Fig. 21C, paragraph 0072). Greenberg teaches that the seal helps to prevent leaking when an instrument is inserted into the repository (paragraph 0072).
Regarding claim 11, Okada discloses the cystoscope system according to claim 9. However, Okada does not explicitly teach an irrigation port in fluid communication with the at least one working channel and wherein the repository further comprises a seal configured to restrict egress of irrigation fluid from the working channel when the cartridge tool is docked within the repository.
Greenberg teaches an irrigation port in fluid communication with the working channel (fluid inflow port 2108 [is] in fluid communication with a single central lumen 2105; Fig. 21A-D, #2108, paragraph 0072) and wherein the repository further comprises a seal configured to restrict egress of irrigation fluid from the working channel when the cartridge tool is docked within the repository (the central port 2102 may comprised a seal or one-way valve … the seal may also be utilized to keep the central port 2102 from leaking when a cystoscope and/or another instrument is inserted therethrough; Fig. 21C, paragraph 0072). Greenberg teaches that a 4-way cystoscopy catheter with an irrigation port separate from the repository allows for a procedure which requires both irrigation and treatment with a treatment tool to be performed without needing to remove the original Folley catheter (paragraph 0014), and Greenberg teaches that the seal helps to prevent leaking when an instrument is inserted into the repository (paragraph 0072).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the endoscope of Okada to incorporate the teachings of Greenberg by adding an irrigation port in fluid communication with the working channel to the handle and adding a seal to the repository. Doing so would allow for a procedure which requires both irrigation and treatment with a treatment tool to be performed without needing to remove the original Folley catheter and help to prevent leaking when an instrument is inserted into the repository, as recognized by Greenberg.
Regarding claim 16, Okada discloses the method according to claim 15. However, Okada does not explicitly teach further comprising supplying irrigation fluid to the at least one working channel through an irrigation port channel, wherein docking the cartridge tool engages a seal that restricts egress of irrigation fluid from the working channel into the repository.
Greenberg teaches supplying irrigation fluid to the working channel through an irrigation port channel (fluid inflow port 2108 [is] in fluid communication with a single central lumen 2105; Fig. 21A-D, #2108, paragraph 0072), wherein docking the cartridge tool engages a seal that restricts egress of irrigation fluid from the working channel into the repository (the central port 2102 may comprised a seal or one-way valve … the seal may also be utilized to keep the central port 2102 from leaking when a cystoscope and/or another instrument is inserted therethrough; Fig. 21C, paragraph 0072). Greenberg teaches that a 4-way cystoscopy catheter with an irrigation port separate from the repository allows for a procedure which requires both irrigation and treatment with a treatment tool to be performed without needing to remove the original Folley catheter (paragraph 0014), and Greenberg teaches that the seal helps to prevent leaking when an instrument is inserted into the repository (paragraph 0072).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the endoscope of Okada to incorporate the teachings of Greenberg by adding an irrigation port in fluid communication with the working channel to the handle and adding a seal to the repository. Doing so would allow for a procedure which requires both irrigation and treatment with a treatment tool to be performed without needing to remove the original Folley catheter and help to prevent leaking when an instrument is inserted into the repository, as recognized by Greenberg.
Claims 4-5 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Okada in view of U.S. Patent Appl. Publ. No. 2020/0367723 A1 to Yoshinaga et al. (“Yoshinaga”).
Regarding claim 4, Okada discloses the cystoscope according to claim 4. Okada discloses knobs on the handle (Fig. 1A). However, Okada does not explicitly disclose wherein the handle further comprises a steering control configured to cause selective deflection of a distal end of the elongated shaft.
Yoshinaga teaches wherein the handle further comprises a steering control configured to cause selective deflection of a distal end of the elongated shaft (a bending operation knob 20 for leftward and rightward bending which bends the bending portion 4 in leftward and rightward directions … are mounted; Fig. 1, paragraph 0034).
Yoshinaga is considered to be analogous to the claimed invention because it is in the same field of endoscopes with a movable elongated tube. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a steering control in the endoscope of Okada, as taught by Yoshinaga, to increase the functionality of the endoscope of Okada by enabling defection of a distal end of the elongated shaft.
Regarding claim 5, Okada, as previously modified by Yoshinaga, discloses the cystoscope according to claim 4. Okada discloses a lever on the handle (Fig. 1A). However, Okada does not explicitly disclose wherein the handle further comprises a steering lock configured to maintain the distal end of the elongated shaft at a desired deflection.
Yoshinaga teaches wherein the handle further comprises a steering lock configured to maintain the distal end of the elongated shaft at a desired deflection (the operation section 6 includes a lock lever 30 which forms a lock mechanism 200 (see Fig. 2) described later which fixes rotary positions of the bending operation knobs 10, 20; Fig. 1, paragraph 0035).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a steering lock in the endoscope of Okada, as taught by Yoshinaga, to increase the functionality of the endoscope of Okada by enabling locking of the defection of a distal end of the elongated shaft.
Regarding claim 17, Okada discloses the method according to claim 15. Okada discloses knobs on the handle (Fig. 1A). However, Okada does not explicitly disclose operating a steering control of the handle of the cystoscope to cause selective deflection of a distal end of the elongated shaft.
Yoshinaga teaches operating a steering control of the handle of the cystoscope to cause selective deflection of a distal end of the elongated shaft (a bending operation knob 20 for leftward and rightward bending which bends the bending portion 4 in leftward and rightward directions … are mounted; Fig. 1, paragraph 0034).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a steering control in the endoscope of Okada, as taught by Yoshinaga, to increase the functionality of the endoscope of Okada by enabling defection of a distal end of the elongated shaft.
Regarding claim 18, Okada discloses the method according to claim 15. Okada discloses a lever on the handle (Fig. 1A). However, Okada does not explicitly disclose operating a steering lock of the handle of the cystoscope to maintain a distal end of the elongated shaft at a desired deflection.
Yoshinaga teaches operating a steering lock of the handle of the cystoscope to maintain a distal end of the elongated shaft at a desired deflection (the operation section 6 includes a lock lever 30 which forms a lock mechanism 200 (see Fig. 2) described later which fixes rotary positions of the bending operation knobs 10, 20; Fig. 1, paragraph 0035).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a steering lock in the endoscope of Okada, as taught by Yoshinaga, to increase the functionality of the endoscope of Okada by enabling locking of the defection of a distal end of the elongated shaft.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Okada in view of U.S. Patent No. 5,269,802 A to Garber (“Garber”).
Regarding claim 14, Okada discloses the cystoscope system according to claims 9 and 12. Specifically, Okada discloses the use of different cartridge tools. However, Okada does not explicitly teach wherein at least two of the plurality of cartridge tools have expandable implants of different sizes.
Garber teaches expandable implants of different sizes (because prostates come in many different lengths and shapes, a family of stents could be constructed to accommodate different anatomical configurations; Fig. 1, col. 5, l. 40-46). Garber teaches the use of different sized expandable implants helps to accommodate different anatomical configurations (col. 5, l. 40-46).
Garber is considered to be analogous to the claimed invention because it is in the same field of medical instruments for treatment in cavities of the body. It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the instrument tool of Okada to incorporate the teachings of Garber by adding expandable implants of different sizes. Doing so would help to accommodate different anatomical configurations, as recognized by Garber.
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 OLIVIA G STARKEY whose telephone number is (571)272-3375. The examiner can normally be reached Monday-Friday 8:00-5:00 ET.
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/OLIVIA GRACE STARKEY/Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795