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
This office action is responsive to the amendment filed on 30 March 2026. As directed by the amendment: claims 1, 9 & 15 have been amended, claims 1, 2, 7 & 8 have been cancelled, and no claims have been added. Thus, claims 1, 4-6 & 9-20 are presently pending in this application, with claims 9-12, 14 & 16-20 currently withdrawn as directed to a non-elected species or a non-elected invention.
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.
Claim 15 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.
Claim 15 recites “wherein the first filter has waterproofing property such that an endoscope including the ventilation pipe sleeve system complies with IPX7 and an air permeability of 50 seconds or smaller in Gurley number”, which raises several issues.
IP ratings such as IPX7 define the ingress protection rating of a complete casing or enclosure, when tested as a whole. The limitation wherein the first filter “has a waterproofing property such that an endoscope including the ventilation pipe sleeve complies with IPX7” causes the scope of the claim to take on an unreasonable degree of uncertainty. The claim is directed to “a ventilation pipe sleeve system”, not “an endoscope” having such a ventilation pipe sleeve system (e.g., as in withdrawn claim 16). It is unclear if this limitation is requiring the endoscope, or is merely intending to define the waterproofing property of the first filter by reference to an intended use (i.e., the use of the system in an endoscope).
As best understood, this was likely intended to mean that the filter is sufficiently waterproof to enable an endoscope comprising the filter to achieve an IPX7 rating (i.e., capable of submersion in 1m of water for up to 30 minutes without harmful effects), rather than actually requiring the endoscope as a positively recited element of the claimed system. However, this raises several further issues.
First, as claim 1 already requires the first filter to be “liquid impermeable”, it is unclear how the additional “waterproofing property” in claim 15 is intended to be objectively assessed.
Next, even if the first filter of the ventilation pipe sleeve system were sufficiently waterproof, the assessment of whether an endoscope including the ventilation pipe sleeve system complies with IPX7 would require an assessment of the entire endoscope enclosure, not just the ventilation pipe sleeve system.
A given ventilation pipe system having a first filter with waterproofing property would read on the claim when used with one endoscope which complies with an IPX7 rating, but the exact same ventilation pipe system with the exact same first filter would fail to read on the claim when used with an endoscope which fails to comply with an IPX7 rating, for example, an endoscope having an enclosure which leaks at some portion other than the ventilation pipe system.
Testing an enclosure (such an endoscope) for an IPX7 rating involves immersing the enclosure in 1m of water for 30 min, however, the amount of water intrusion permitted is not necessarily the same for every application. As understood, an IPX7 rating may still be achieved with some amount of water entry so long as the water is insufficient to interfere with operation of the equipment or impair safety, and otherwise does not deposit on insulation, reach live parts which are not designed for wet operation, or accumulate near cables.
Given the application-specific variability of requirements to meet the IPX7 rating (e.g., location of the filter relative to other critical components, etc.), a filter suitable for an IPX7 rating for one device may not necessarily be suitable for another, so even if the claim was interpreted such that the filter is suitable for an IPX7 enclosure, no objective standard is provided by which to assess the suitability of the filter generally, rather than as applied to a specific application (which is beyond the scope of the claimed invention), causing the claim to take on an unreasonable degree of uncertainty.
In view of the above, the claim limitation thus appears to improperly depend on specific features or capabilities of elements which are outside the scope of the actual claimed invention.
In addition to the issues with the IPX7 rating above, the language of the claim is also indefinite with respect to the air permeability limitation. The claim was likely intended to establish that the first filter has a “waterproofing property” and “an air permeability of 50 seconds or smaller….”, however, the current phrasing of the claim might be seen as stating that the air permeability is a result of the waterproofing property, or even that the endoscope (rather than the first filter) has the cited air permeability rating.
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.
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.
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.
Claims 1, 5-6 & 13 are rejected under 35 U.S.C. 103 as being unpatentable over Egersdoerfer et al. (US 2011/0275305 A1; hereafter Egersdoerfer) in view of Yano et al. (US 2022/0314150 A1; hereafter Yano ‘150) and Whitley, II (US 4,825,905; hereafter Whitley).
Regarding claim 1, Egersdoerfer discloses (figs. 1-3; alt. embodiments shown in figs. 4-7 & 8-10) a ventilation pipe sleeve system (10), comprising:
a ventilation pipe sleeve (11);
a first filter (15); and
a cap (19) attached to the ventilation pipe sleeve (see fig. 3),
wherein the ventilation pipe sleeve includes a tubular body including an outer surface (i.e., a radially outer surface) and an inner surface (i.e., radially inner surface incl. at least inner surface defining conduit 14),
wherein the inner surface of the tubular body defines a conduit (14) extending from a first end (i.e., an upper end) to a second end (i.e., a lower end) of the ventilation pipe sleeve (see fig. 3),
wherein the first filter is liquid impermeable and is gas permeable (para. 59, lines 4-5: “a porous material 15 that is air permeable and liquid impermeable”; see also para. 8: “…an air permeable, water impermeable venting element is provided and covers the passageway…”),
wherein the first filter is fixed to the tubular body (i.e., as shown in figs. 1 & 3; see also para. 77, lines 8-14: the porous material may be attached to the body using known techniques including thermal or ultrasonic welding, adhesive, or insert molding) to form a watertight structure at a first end region of the tubular body (see figs. 1 & 3; see para. 11, lines 6-8: “the venting device…may also be IP68 waterproof…”, thus, as understood, the structure at the first end region is watertight at least to IP68 standards; see also para. 8),
wherein the cap (19) covers the first filter (15) and at least a portion of the outer surface of the tubular body (as shown in fig. 3; the cap covers at least a portion of the tubular body outer surface in the first end region),
wherein the outer surface of the tubular body includes a sleeve engagement structure (i.e., the annular groove / recess as shown in figs. 2c & 3),
wherein an inner surface of the cap includes a cap engagement structure (i.e., the protruding element(s) shown in fig. 3 engaging the annular recess of the tubular body),
wherein, when the cap is attached to the ventilation pipe sleeve, the sleeve engagement structure engages with the cap engagement structure (i.e., as shown in fig. 3),
wherein the sleeve engagement structure includes one or more of a first recess or a first protrusion (i.e., a first recess, shown as the annular recess in figs. 2c & 3) and the cap engagement structure includes one or more of a second recess or a second protrusion (i.e., a second protrusion, as shown in fig. 3 engaged within the annular recess of the tubular body).
Egersdoerfer further discloses that the first filter may be fixed to the tubular body by a first adhesive (see para. 77, lines 8-14: Egersdoerfer discloses that the porous material filter may be attached to the body “using known techniques including thermal or ultrasonic welding or using an adhesive”).
Regarding the additional limitation wherein the first adhesive is watertight material, while Egersdoerfer does not explicitly specify a particular adhesive, Egersdoerfer otherwise suggests that “the venting device…may also be IP68 waterproof…” (para. 11, lines 6-8). Thus, as understood, when an adhesive is used, such an adhesive would be a material at least sufficiently watertight to enable the system to achieve an IP68 standard.
However, to promote compact prosecution, the following additional teaching is provided.
Yano ‘150 is generally directed to a ventilation system having a liquid impermeable / gas permeable filter element (see abstract). The system of Yano ‘150 also includes a sealing element (30) between the body of the ventilation system and an enclosure wall (2), in order to prevent a gas (e.g., air) or liquid (e.g., water) leak in that area (see para. 27).
Yano ‘150 teaches that a sealing element (30) may be provided as a “single layer of an adhesive 32” (para. 31, lines 3-5, describing fig. 2A).
Yano ‘150 further suggests a number of “known” adhesives which can be used to form a sealing element including, for example, epoxy resin adhesive, silicone resin adhesive, vinyl resin adhesive, hot melt adhesive, or cyanoacrylate adhesive (para. 60).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Egersdoerfer such that the first adhesive fixing the first filter to the tubular body is a watertight material (e.g., a known adhesive such as epoxy, silicone, or vinyl adhesive, etc.), in view of the teachings of Yano ‘150, in order to ensure that the connection between the first filter and the tubular body is a sealed connection / does not form a leak, whereby such a leak could undesirably allow liquid to bypass the filter, compromising its liquid impermeability function; and further obvious considering that it has been held to be within the general skill of a worker in the art to select a known material (i.e., a known adhesive in this case) on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Egersdoerfer does not explicitly disclose the additional limitation wherein the cap is fixed to the ventilation pipe sleeve by a second adhesive.
Whitley teaches (figs. 1-4) ventilation pipe sleeve system (10), comprising:
a ventilation pipe sleeve (12 / 40);
a first filter (60); and
a cap (42) attached to the ventilation pipe sleeve (see figs. 1 & 3),
wherein the ventilation pipe sleeve includes a tubular body (40) including an outer surface (i.e., a radially outer surface) and an inner surface (i.e., radially inner surface incl. at least inner surface defining conduit 28),
wherein the inner surface of the tubular body defines a conduit (28) extending from a first end to a second end of the ventilation pipe sleeve (see fig. 3),
wherein the cap (42) covers the first filter (60) and at least a portion (46) of the outer surface of the tubular body (as shown in fig. 3).
Whitley explains that the inner surface of the cap and the outer surface (46) of the tubular body are provided with corresponding engagement features (i.e., threads), and suggests that, while such an engagement feature enables the cap to be removable to permit removal of any debris which may accumulate within the cap, “the invention additionally comprehends engagement of surfaces 46 and 56 by more permanent means, such as by a suitable adhesive” (cool. 3, lines 6-12).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Egersdoerfer such that the cap is fixed to the ventilation pipe sleeve by a second adhesive, in view of the teachings of Whitley, to provide for a permanent connection between the cap and the tubular body, as suggested by Whitley.
Regarding claim 5, the system of Egersdoerfer reads on the additional limitations wherein the first end region of the tubular body includes a first seating surface (i.e., recessed end surface in which the first filter is arranged; as shown in figs. 1 & 3), and
wherein the first filter is located in the first seating surface (i.e., as shown in figs. 1 & 3).
Regarding claim 6, the system of Egersdoerfer reads on the additional limitations wherein the conduit (14) along a main portion has a first inner diameter (see fig. 3),
wherein a surface of the first seating surface has a second inner diameter (i.e., a diameter substantially corresponding to the diameter of the first filter; as shown in figs 1 & 3), and
wherein the second inner diameter is larger than the first inner diameter (i.e., as shown in fig. 3).
Regarding claim 13, with respect to the limitation wherein the cap includes a hole providing fluid communication between an inside of the tubular body and an outside of the cap, while no hole is explicitly shown in the figures of Egersdoerfer, a person having ordinary skill in the art would have reasonably inferred that some hole or other opening would be provided in order to permit the ventilation system to function as described with the cap in place (i.e., otherwise the cap would seal the device, preventing it from functioning as described).
However, to promote compact prosecution, the following additional teaching is provided.
As previously described, Whitley teaches (figs. 1-4) ventilation pipe sleeve system (10), comprising a ventilation pipe sleeve (12 / 40), a first filter (60), and a cap (42) attached to the ventilation pipe sleeve (see figs. 1 & 3), wherein the ventilation pipe sleeve includes a tubular body (40) including an outer surface (i.e., a radially outer surface) and an inner surface (i.e., radially inner surface incl. at least inner surface defining conduit 28), wherein the cap (42) covers the first filter (60) and at least a portion (46) of the outer surface of the tubular body (as shown in fig. 3).
Whitley further teaches that the cap (42) includes a hole (34) providing fluid communication between an inside of the tubular body and an outside of the cap (col. 2, lines 25-27: “An annular opening 34… provides a passage between bore 28 and the atmosphere”; see figs. 2 & 3; note: annular opening 34 is clearly shown in fig. 2; in fig. 3, the opening is also clearly shown at bottom of fig. 3, near arrow from “52”, but is incorrectly labelled as “54”).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Egersdoerfer such that the cap includes a hole providing fluid communication between an inside of the tubular body and an outside of the cap, in view of the teachings of Whitley, to enable the cap to remain in place during operation, providing fluid communication between the interior of the cap (which is in communication with the inside of the tubular body via the first filter) and the exterior environment (i.e., as required for venting), while still providing physical protection to the first filter (e.g., preventing foreign matter such as dirt or water droplets from directly impacting the first filter, etc.).
Claims 1 & 13 are rejected under 35 U.S.C. 103 as being unpatentable over Yano et al. (US 2009/0047890 A1; hereafter Yano ‘890) in view of Yano ‘150.
Regarding claim 1, Yano ‘890 discloses (figs. 1-10C) a ventilation pipe sleeve system (1), comprising:
a ventilation pipe sleeve (2);
a first filter (6); and
a cap (10) attached to the ventilation pipe sleeve,
wherein the ventilation pipe sleeve (2) includes a tubular body (incl. at least “base portion 15” which “is of a ring shape (or a tubular shape)” [para. 35, lines 8-10]) including an outer surface (i.e., the radially outer surface) and an inner surface (i.e., radially inner surface defining conduit 3),
wherein the inner surface of the tubular body defines a conduit (3) extending from a first end (i.e., the upper end) to a second end (i.e., the lower end) of the ventilation pipe sleeve (see fig. 3),
wherein the first filter (6) is liquid impermeable and is gas permeable (see, e.g., para. 39: “…a membrane that allows permeation of a gas and inhibits permeation of a liquid…”; see also para. 31, lines 11-14),
wherein the first filter is fixed to the tubular body to form a watertight structure at a first end region of the tubular body (para. 42: “In this embodiment, the permeable membrane 6 is fixed to the support body 2 by means of thermal welding. However, the permeable membrane can be fixed to the support body 2 by other methods, for example, by means of ultrasonic welding or with the use of an adhesive”),
wherein the cap (10) covers the first filter and at least a portion of the outer surface of the tubular body (as shown in figs. 1, 3, 5, 7, etc.: the cap covers at least the outer surface of portion 14 of the tubular body and portions 121 of the cap extend downward to further cover portions 17 of the outer surface of the tubular body),
wherein the outer surface of the tubular body includes a sleeve engagement structure (recesses 17),
wherein an inner surface of the cap includes a cap engagement structure (see protrusion at inner surface of engagement portions 121 in figs. 5 & 7),
wherein, when the cap is attached to the ventilation pipe sleeve, the sleeve engagement structure engages with the cap engagement structure (i.e., as shown in figs. 3, 5 & 7),
wherein the sleeve engagement structure includes one or more of a first recess or a first protrusion (i.e., first recesses 17) and the cap engagement structure includes one or more of a second recess or a second protrusion (i.e., second protrusions at engagement portions 121),
wherein the first filter is fixed to the tubular body by a first adhesive (see para. 42: “the permeable membrane can be fixed to the support body 2 by other methods, for example, by means of ultrasonic welding or with the use of an adhesive”); and
wherein the cap is fixed to the ventilation pipe sleeve by a second adhesive (para. 45: “…the cover part may be fixed directly to the support body with the use of an adhesive or by means of ultrasonic welding…”).
Regarding the additional limitation wherein the first adhesive is watertight material, while Yano ‘890 does not explicitly specify a particular adhesive, Yano ‘890 otherwise explains that the filter (permeable membrane) is intended to be capable of preventing the entry of foreign matter, such as water droplets, into the conduit of the tubular body (para. 31). Thus, as understood, when an adhesive is used, such an adhesive would be a material at least sufficiently watertight to prevent entry of water droplets into the conduit.
However, to promote compact prosecution, the following additional teaching is provided.
Yano ‘150 is generally directed to a ventilation system having a liquid impermeable / gas permeable filter element (see abstract). The system of Yano ‘150 also includes a sealing element (30) between the body of the ventilation system and an enclosure wall (2), in order to prevent a gas (e.g., air) or liquid (e.g., water) leak in that area (see para. 27).
Yano ‘150 teaches that a sealing element (30) may be provided as a “single layer of an adhesive 32” (para. 31, lines 3-5, describing fig. 2A).
Yano ‘150 further suggests a number of “known” adhesives which can be used to form a sealing element including, for example, epoxy resin adhesive, silicone resin adhesive, vinyl resin adhesive, hot melt adhesive, or cyanoacrylate adhesive (para. 60).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Yano ‘890 such that the first adhesive fixing the first filter to the tubular body is a watertight material (e.g., a known adhesive such as epoxy, silicone, or vinyl adhesive, etc.), in view of the teachings of Yano ‘150, in order to ensure that the connection between the first filter and the tubular body is a sealed connection / does not form a leak, whereby such a leak could undesirably allow liquid to bypass the filter, compromising its intended liquid impermeability function; and further obvious considering that it has been held to be within the general skill of a worker in the art to select a known material (i.e., a known adhesive in this case) on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 13, the system of Yano ‘890 reads on the additional limitation wherein the cap (10) includes a hole (10a and/or 10b) providing fluid communication between an inside of the tubular body and an outside of the cap (as shown; see para. 32, lines 1-8).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Egersdoerfer in view of Yano ‘150 & Whitley as applied to claim 1 above, and further in view of Furuyama et al. (US 2009/0084078 A1; hereafter Furuyama).
Regarding claim 4, Egersdoerfer does not explicitly disclose the additional limitations wherein an inner surface of the cap includes a protrusion, and wherein, when the cap is attached to the ventilation pipe sleeve, the protrusion contacts a surface of the first filter.
Furuyama teaches (e.g., figs. 1-7; with various modified / alternate embodiments shown in figs. 9-21) a ventilation pipe sleeve system (e.g., 100), comprising a ventilation pipe sleeve (11); a first filter (19); and a cap (31) attached to the ventilation pipe sleeve (as shown in at least fig. 3), wherein the ventilation pipe sleeve includes a tubular body (i.e., body of 11; the sleeve 11 is called “tubular part 11” in Furuyama) defining a conduit (AR1) extending from a first end to a second end of the ventilation pipe sleeve (see figs. 1 & 3), wherein the first filter (19) is liquid impermeable and is gas permeable (para. 51: “The gas permeable filter 19 fixed to the filter-end opening 15 of the tubular part 11 can be made of a material having dustproofness, waterproofness, and gas permeability”; see also para. 1), wherein the first filter is fixed to the tubular body to form a watertight structure at a first end region of the tubular body (as shown; see para. 52, lines 11-15), wherein the cap (31) covers the first filter and at least a portion of an outer surface of the tubular body (as shown in at least figs. 1 & 3).
Furuyama further teaches that an inner surface of the cap (31) includes a protrusion (33; see figs. 1, 3 & 7) wherein, when the cap (31) is attached to the ventilation pipe sleeve (11), the protrusion (33) contacts a surface of the first filter (19)(see fig. 3; see also para. 53: the protrusions 33 keep filter 19 from contacting surface 35 of the cap, defining a gas passage AR2 therebetween).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Egersdoerfer such that an inner surface of the cap includes a protrusion, and wherein, when the cap is attached to the ventilation pipe sleeve, the protrusion contacts a surface of the first filter, in view of the teachings of Furuyama, in order to provide additional mechanical support / retention means for the first filter (i.e., clamping the filter between the tubular body and the cap, rather than relying solely on the adhesive body between the filter and the tubular body for support), or otherwise obvious as the use of a known technique (i.e., providing the a cap with a protrusion which contacts a surface of a filter when attached to a corresponding pipe sleeve, as in Furuyama) to improve a similar device (i.e., system of Egersdoerfer, having such a cap and a filter fixed to a ventilation pipe sleeve) in the same way (i.e., as above, to keep the filter in place against the tubular body and/or to prevent the filter from contacting an inner surface of the cap which defines a gas passage for venting gas, as in Furuyama).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yano ‘890 in view of Yano ‘150 as applied to claim 1 above, and further in view of Furuyama.
Regarding claim 4, Yano ‘890 does not explicitly disclose the additional limitations wherein an inner surface of the cap includes a protrusion, and wherein, when the cap is attached to the ventilation pipe sleeve, the protrusion contacts a surface of the first filter.
Furuyama teaches (e.g., figs. 1-7; with various modified / alternate embodiments shown in figs. 9-21) a ventilation pipe sleeve system (e.g., 100), comprising a ventilation pipe sleeve (11); a first filter (19); and a cap (31) attached to the ventilation pipe sleeve (as shown in at least fig. 3), wherein the ventilation pipe sleeve includes a tubular body (i.e., body of 11; the sleeve 11 is called “tubular part 11” in Furuyama) defining a conduit (AR1) extending from a first end to a second end of the ventilation pipe sleeve (see figs. 1 & 3), wherein the first filter (19) is liquid impermeable and is gas permeable (para. 51: “The gas permeable filter 19 fixed to the filter-end opening 15 of the tubular part 11 can be made of a material having dustproofness, waterproofness, and gas permeability”; see also para. 1), wherein the first filter is fixed to the tubular body to form a watertight structure at a first end region of the tubular body (as shown; see para. 52, lines 11-15), wherein the cap (31) covers the first filter and at least a portion of an outer surface of the tubular body (as shown in at least figs. 1 & 3).
Furuyama further teaches that an inner surface of the cap (31) includes a protrusion (33; see figs. 1, 3 & 7) wherein, when the cap (31) is attached to the ventilation pipe sleeve (11), the protrusion (33) contacts a surface of the first filter (19)(see fig. 3; see also para. 53: the protrusions 33 keep filter 19 from contacting surface 35 of the cap, defining a gas passage AR2 therebetween).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Yano ‘890 such that an inner surface of the cap includes a protrusion, and wherein, when the cap is attached to the ventilation pipe sleeve, the protrusion contacts a surface of the first filter, in view of the teachings of Furuyama, in order to provide additional mechanical support / retention means for the first filter (i.e., clamping the filter between the tubular body and the cap, rather than relying solely on the adhesive body between the filter and the tubular body for support), or otherwise obvious as the use of a known technique (i.e., providing the a cap with a protrusion which contacts a surface of a filter when attached to a corresponding pipe sleeve, as in Furuyama) to improve a similar device (i.e., system of Yano ‘890, having such a cap and a filter fixed to a ventilation pipe sleeve) in the same way (i.e., as above, to keep the filter in place against the tubular body and/or to prevent the filter from contacting an inner surface of the cap which defines a gas passage for venting gas, as in Furuyama).
Claim 15 (as understood) is rejected under 35 U.S.C. 103 as being unpatentable over Egersdoerfer in view of Yano ‘150 and Whitley as applied to claim 1 above, and further in view of Protzner et al. (US 2002/0090506 A1; hereafter Protzner).
Regarding claim 15, with respect to the limitation wherein “the first filter has a waterproofing property such that an endoscope including the ventilation pipe sleeve system complies with IPX7”, it is first noted that the scope of this claim is indefinite (see related 35 U.S.C. 112(b) rejection in this action).
However, as best understood, the system of Egersdoerfer, as modified above, reasonable reads on the above limitation.
As set forth in MPEP § 2114(II), "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.
In the instant case, Egersdoerfer states that the disclosed ventilation pipe sleeve system may be “IP68 waterproof up to 0.3 bar” (para. 11, lines 6-8), and suggests that such ventilation pipe sleeve systems may be incorporated into a sealed enclosure for applications in “the automotive, electronic, medical, packaging and other industries” (para. 2).
For context, and as would be understood by a person having ordinary skill in the relevant art, in the “IPXX” rating system the first digit after “IP” indicates resistance to solid foreign objects, with the highest rating “6” indicating a “dust-tight” enclosure. The second digit indicates protection against water ingress, with ratings 1 & 2 indicated water drop protection, 3-6 indicating various levels of water jet protection, and 7 & 8 indicating water immersion protection.
The claimed “IPX7” rating indicates that the tested enclosure is protected at a “7” rating against water immersion (i.e., up to 1m for 30 mins), with no rating (X) provided for solid foreign objects.
Egersdoerfer’s disclosed IP68 rating indicates that the device is both dust-proof (i.e., a “6” for foreign object ingress) and protected at an “8” rating against water immersion (extended immersion at greater depths; variable by application but greater than IPX7 rating).
As the ventilation pipe sleeve system of Egersdoerfer, which includes the first filter as a component of the enclosure in communication with the exterior environment, is understood to be capable of achieving an IP68 waterproof rating, and is also suggested to be suitable for incorporation into sealed enclosures with applications in various fields, including medical applications, the first filter of Egersdoerfer is also reasonably understood to have a waterproofing property sufficient to enable an endoscope including the ventilation pipe sleeve system of Egersdoerfer to comply with IPX7 requirements (to the extent that the ventilation pipe sleeve system, including the first filter, could sufficiently prevent water intrusion into an enclosure which would otherwise be compliant with IPX7 requirements, etc.).
Regarding the limitation wherein the first filter has an air permeability of 50 seconds or smaller in a Gurley number, Egersdoerfer discloses that the first filter is air permeable (e.g., paras. 40 & 59) but does not specify a particular degree of permeability.
Protzner teaches (figs. 1-4) a ventilation pipe sleeve system (2) comprising a sleeve (5), first filter (8), and a cap (6), wherein the first filter (8) is liquid impermeable and gas permeable (see para. 25; para. 52, lines 5-6; etc.).
Protzner further teaches that “the air throughput of the membrane lies around a value of <30 Gurley seconds… Consequently, the membrane is capable of transporting gases, such as air for example, into or out of the electronic housing” (para. 33; see also paras. 99-100).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Egersdoerfer such that the first filter has an air permeability of 50 seconds or smaller in a Gurley number (e.g., <30 Gurley seconds, as suggested by Protzner), in view of the teachings of Protzner, to ensure that the first filter is capable of permitting sufficient gas volume throughput (i.e. minimizing the restriction of from the filter on the gas / air flowing into or out of the enclosure to which the ventilation pipe sleeve system is attached, etc.), as otherwise suggested by Protzner.
Response to Arguments
Applicant's arguments filed 30 March 2026 have been fully considered.
Applicant’s amendments have overcome the grounds of rejection under 35 U.S.C. § 102 set forth in the previous action, however, new or otherwise amended grounds of rejection have been applied to the claims in this action, as necessitated by applicant’s amendments. To the extent that applicant’s arguments remain pertinent to the grounds of rejection in this action, the following responses are provided.
As a preliminary matter, claim 1 has been amended to incorporate the combined limitations previously recited in claims 2, 3, 7 & 8 (each now cancelled). In the previous action, claims 1-3, 5 & 6 were rejected in view of Egersdoerfer and, separately, claims 1-3 and 13 were rejected in view of Yano ‘890 (“Yano 1”). Thus, applicant’s amendments to incorporate the subject matter of claims 7 & 8 overcomes the rejections under 35 U.S.C. § 102. However, in the previous action, as noted by applicant, claim 7 was rejected as obvious over Egersdoerfer in view of Yano ‘150 (“Yano 2”), claim 8 was rejected as obvious over Egersdoerfer in view of Yano ‘150 and Whitley, and claims 7 & 8 were also rejected as obvious over Yano ‘890 in view of Yano ‘150.
With respect to the above rejections, while applicant attempts to argue the combinations involving Whitley (and, with respect to claim 15, Protzner), applicant’s remarks do not appear to argue the combinations involving Yano ‘150. Indeed, the limitations of claims 1-3, 7 & 8 were each disclosed by Yano ‘890 or otherwise rendered obvious in view of the combination of Yano ‘890 and Yano ‘150, and applicant’s remarks do not appear to set forth any articulated reasoning as to how amended claim 1, which merely combines these limitations, is intended to overcome such grounds of rejection.
In applicant's arguments involving Whitley and Protzner, applicant initially argues that “there is no motivation to individually combine these references with Egersdoerfer”. With respect to this aspect of the arguments, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, articulated reasons for why one of ordinary skill in the art would have sought to combine the teachings from these references were explicitly recited in the grounds of rejection set forth in the previous action. By way of example, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Egersdoerfer such that the cap is fixed to the ventilation pipe sleeve by a second adhesive, in view of the teachings of Whitley, to provide for a permanent connection between the cap and the tubular body, as suggested by Whitley.
Applicant’s arguments with respect to Whitley and Protzner continue, with applicant arguing that these references are nonanalogous art (“the vent disclosed in Whitley is a gas vent for venting the fuel tank of a boat and the vent disclosed in Protzner is a vent designed to limit the electro-magnetic interference”).
It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
As set forth in MPEP § 2141.01(a)(I), a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention).
Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
When more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other.
See also Netflix, Inc. v. DivX, LLC, 80 F.4th 1352, 1358-59, 2023 USPQ2d 1057 (Fed. Cir. 2023) ("The field of endeavor is ‘not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.’") (quoting Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001, 120 USPQ2d 1593, 1597 (Fed. Cir. 2016)).
See also MPEP § 2141.01(a)(IV).
Starting with Whitley, applicant argues that Whitley and the present application “concern devices that are from unrelated fields of endeavor and serve entirely different functions”. This argument is not found to be persuasive.
Both Whitley and the claimed invention are directed to ventilation pipe sleeve systems intended to enable venting of a gas from a conduit while preventing liquid from entering the conduit, each comprising a tubular body defining a conduit, a filter fixed to the tubular conduit, and a cap covering the filter. Thus, Whitley may reasonably be seen as within the same field of endeavor as the claimed invention, when the field of invention is considered to be ventilation pipe sleeve systems, generally. It is noted that the invention of claim 1 as claimed does not require the ventilation pipe sleeve system to be used in an endoscope, or even in a medical application. However, even if the field of endeavor were to be interpreted narrowly so as to be limited specifically to ventilation pipe sleeves for endoscopes, the ventilation pipe sleeve of Whitley would still be reasonably pertinent to the claimed invention as a device with substantially similar structure and/or function, and would otherwise fall within the broad spectrum of prior art which would be reasonably explored as an area where one of ordinary skill in the art would be aware the similar problems may exist [see MPEP § 2141.01(a)(IV), citing Stevenson v. Int'l Trade Comm., 612 F.2d 546, 550, 204 USPQ 276, 280 (CCPA 1979)].
In this case, there is no evidence that one of ordinary skill in the art would have considered the problem of securing a cap over a gas-permeable filter to be a problem specific to endoscopes and, conversely, there is no evidence to suggest that one of ordinary skill in the art would have expected the solution taught by Whitley of using an adhesive to secure the cap to the sleeve (when a permanent joint is desired) to be unsuccessful for securing caps to sleeves in other applications where such a permanent joint may similarly be desired.
With respect to Protzner, applicant argues that “the present Application and Protzner have different problems to be solved. The problem addressed by Protzner is completely different than the problem addressed in the present Application. The primary aim of Protzner is to ‘provide for a venting element for electronic housings which shields against electromagnetic waves’….Given that there is no concern for EMI in the present Application, applicant respectfully asserts that one of ordinary skill in the art would not have considered Protzner”.
This argument is not found to be persuasive for several reasons.
First, it is noted that applicant does not appear to have argued that Protzner is from a different field, only that it addresses a different problem. As previously explained, a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). The "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art.
Even if Protzner addresses a different problem, it is still reasonably seen to be in the same field of endeavor of ventilation pipe sleeves (e.g., gas-permeable, liquid-impermeable vents), generally.
Moreover, as set forth in MPEP § 2123(I), "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
As a result, the teachings of Protzner with respect to the use of a desired air permeability range for the gas-permeable / liquid-impermeable filter are reasonably pertinent to the claimed invention, even if the issue of electro-magnetic interference isn’t a problem with which the inventor of the instant application was concerned.
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 Richard K Durden whose telephone number is (571) 270-0538. The examiner can normally be reached Monday - Friday, 9:00 AM - 5:00 PM ET.
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/Richard K. Durden/Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753
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