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 .
Election/Restrictions
Applicant’s election of Invention II, Species A of Group I, Species A of Group II, Species E of Group III, readable on claims 11-13, 15, 21, 23 in the reply filed on 10/31/2025 is acknowledged. 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)).
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed subject of “the draw-out portion of the stranded wire inside the component” in Lines 8-9 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
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 11-13, 15, 21 and 23 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 11 recites the limitation “wherein the covering portion is disposed at a draw-out portion of the stranded wire inside the endoscope component” in Lines 8-9, wherein the claim language is indefinite as to the meets and bounds of what the draw-out portion of the stranded wire entails. Additionally, it’s not clear the different between covering portion and the draw-out portion since the covering portion and draw-out portion appear to be defined as the same portion of the stranded wire. Appropriate correction is required.
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.
Claims 11, 12 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hiratsuka (US Patent Application Publication No. 2018/0220875).
In regard to claim 11, Hiratsuka discloses an endoscope comprising:
an endoscope component (17, Fig. 8),
wherein the endoscope component is an integrally molded body integrally molded with a stranded wire (11,12, the endoscope component (17) is capable of being integrally molded with the stranded wire since the component (17) is fixed to the stranded wire) composed of a plurality of elemental wires (Par. 24),
wherein the stranded wire has a covering portion (section of the stranded wire in which the joint member (11) is disposed)), in which a gap filling member (11) that fills a gap formed between the plurality of elemental wires is disposed (Figs. 4,6), at one end portion of the stranded wire (Figs. 5,8); and
wherein the covering portion is disposed at a draw-out portion of the stranded wire inside the endoscope component (the draw-out portion is the portion of the stranded wire (12) inside both the joint member (11) and component (17)).
In regard to claim 12, Hiratsuka teaches wherein the covering portion comprises an exposed portion exposed from the endoscope component (Fig. 8 illustrates proximal and distal portions of the gap filling member (11) of the stranded wire longitudinally extend from the endoscope component (17)).
In regard to claim 21, Hiratsuka teaches wherein the gap filling member is a pipe (11) externally fitted to an outer peripheral surface of the stranded wire (Figs. 5,8).
Claims 11-13, 21 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Komata (JPS59-144434A).
In regard to claim 11, Komata discloses an endoscope (1, Fig. 1) comprising:
an endoscope component (24, Fig. 3),
wherein the endoscope component is an integrally molded body integrally molded with a stranded wire (21,23, the endoscope component (24) is capable of being integrally molded with the stranded wire since the component (24) is fixed to the stranded wire) composed of a plurality of elemental wires (21’, Fig. 4),
wherein the stranded wire has a covering portion (section of the stranded wire in which the socket (23) is disposed)), in which a gap filling member (23) that fills a gap formed between the plurality of elemental wires is disposed (Figs. 3,4), at one end portion of the stranded wire (Fig. 3); and
wherein the covering portion is disposed at a draw-out portion of the stranded wire inside the endoscope component (the distal end of the stranded wire disposed in the socket (23) and component (24) is considered the draw-out portion).
In regard to claim 12, Komata teaches wherein the covering portion comprises an exposed portion exposed from the endoscope component (Figs. 2-3 illustrate a portion of the covering portion (21,23) exposed from the component (24)).
In regard to claim 13, Komata teaches wherein the stranded wire comprises an extending portion (portion of the wire (21) not covered by the socket (23), Fig. 3) on a distal end side of the stranded wire, the extending portion being exposed from the covering portion in the endoscope component (Fig. 3 shows a portion of the wire (21) not covered by the socket (23) disposed within the component (24)).
In regard to claim 21, Komata teaches wherein the gap filling member is a pipe (23) externally fitted to an outer peripheral surface of the stranded wire (Figs. 3-4).
In regard to claim 23, Komata teaches wherein the endoscope component is a raising base (24) disposed at a distal-end-portion main body provided on a distal end side of an insertion unit (3) of the endoscope (Figs. 1,3).
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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Komata (JPS59-144434A) in view of Hosogoe (US Patent Application Publication No. 2020/0397233).
In regard to claim 15, Komata does not expressly teach wherein the endoscope component is an injection molded body made of a resin material.
Hosogoe teaches an analogous endoscope comprising an elevator at a distal end of the endoscope for changing an angle at which a treatment instrument exits a distal end of a working channel of the endoscope. Hosogoe teaches the elevator can be molded from a resin material (Par. 118).
It would’ve been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the elevator of Komata to be formed of a resin material as taught by Hosogoe as a matter of design choice thereby forming the elevator of a material having an appropriate tensile yield stress to withstand the forces for actuating the elevator (Par. 116-118).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN N HENDERSON whose telephone number is (571)270-1430. The examiner can normally be reached Monday-Friday 6am-5pm (PST).
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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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/RYAN N HENDERSON/Primary Examiner, Art Unit 3795 December 23, 2025