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 with traverse of Species I of the Imaging Unit Group & Species A of the Illumination Unit Group in the reply filed on December 23, 2025 is acknowledged.
While Applicant selected one species for each identified group, Applicant did not elect a single group of claims. Instead, Applicant identified Claims 1-3 & 11-15 to read on Species I and identified Claims 1-3, 7-9 & 11-15 to read on Species A. Examiner, therefore, has interpreted Applicant’s single group of elected claims to be Claims 1-3, 7-10 & 11-15, as those claims were common to both species.
Additionally, while Applicant has identified Claims 3, 11 & 13 to read on both Species A & Species I, Claims 3, 11 & 13, however, are drawn to non-elected species, as detailed below. As such, Claims 1-2, 7-9, 12 & 14-15 correspond to the election of Species A & I and will be examined on the merits, with Claims 3-6, 10-11 & 13 —which include Applicant elected claims 3, 11 & 13— are drawn to non-elected species and will not be examined on the merits.
Regarding Claim 3, Claim 3 recites the limitation “wherein… the first axial direction range [is divided] evenly into two ranges”. This limitation, however, is only disclosed in Species III of the Imaging Unit Group (see Para. [0036] of Applicant’s specification). As such, Claim 3 is drawn to a non-elected species and thus not examined.
Regarding Claim 11, Claim 11 recites the limitation “wherein the illumination optical system includes a lens constituted of two layers of a core portion and a cladding portion”. This limitation, however, is only discloses in Species III of the Imaging Unit Group (see Paras. [0035] & [0037] of Applicant’s specification). As such, Claim 11 is drawn to a non-elected species and thus not examined.
Regarding Claim 13, Claim 13 recites the limitation “wherein the first abutting portion has an arc shape”. This limitation, however, is only disclosed in Species C of the Illumination Unit Group (see Para. [0055] of Applicant’s specification). As such, Claim 13 is drawn to a non-elected species and thus not examined.
Finally, the traversal is on the grounds that given all of Species I-V & Species A-D share the common feature of enabling the placement numerous abutting portions... within the second axial-direction range, the Examiner could conduct examination of all species without an unreasonable burden. This is not found persuasive because while all species may have common feature(s), each have mutually exclusive aspects that would result in prior art being pertinent/applicable to one invention but not pertinent/applicable to the other invention(s) (see MPEP § 808.02(c)).
Therefore the requirement is still deemed proper and is therefore made FINAL.
Disposition of Claims
Claims 1-15 are pending.
Claims 1-2, 7-9, 12 & 14-15 are rejected.
Claims 3-6, 10-11 & 13 are withdrawn.
Claim Objections
Claim 7 is objected to because of the following informality:
Regarding Claim 7, Claim 1 recites the limitation “the second holding frame in a radial direction [emphasis added]” on Line 12. Claim 7 further recites the limitation “the first holding frame in a radial direction [emphasis added]”. Examiner kindly requests Applicant amend “the first holding frame in a radial direction” to read “the first holding frame in the radial direction [emphasis added]” to provide consistent claim language throughout.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
“a first abutting portion configured to abut” in Claims 1 & 15, as described in Para. [0023] of Applicant’s specification.
“a second abutting portion configured to abut” in Claim 8, as described in Para. [0024] of Applicant’s specification.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2, 7-9, 12 & 14 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.
Regarding Claim 1, Claim 1 recites the limitation “the subject image” on Lines 7-8. There is insufficient antecedent basis for this limitation in the claims. For the purpose of examination, “the subject image” is being interpreted as “a subject image”.
Regarding Claims 2, 7-9, 12 & 14-15, Claims 2, 7-9, 12 & 14 are rejected as being dependent upon claims previously rejected under 35 U.S.C. § 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.
Claims 1-2, 7-9, 12 & 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishina et al. (hereinafter "Nishina") (US 2017/0265715).
Regarding Claim 1, Nishina discloses an imaging unit (a distal end assembly; see Nishina Annotated Fig. 11) comprising:
an illumination unit (Nishina Annotated Fig. 11, an illumination assembly comprising 22 & 24; [0038]) that includes an illumination optical system (Nishina Annotated Fig. 11, 22; [0038]);
a first holding frame (Nishina Annotated Fig. 11, 23; [0055]) configured to hold the illumination unit ([0038]);
an imaging-unit main body (Nishina Annotated Fig. 11, an imaging-unit assembly comprising 17a, 17b and 18; [0035] & [0058]) that includes an imager (Nishina Annotated Fig. 11, 18; [0058]), and an observation optical system (Nishina Annotated Fig. 11, an observation optical assembly comprising 17a and 17b; [0035]) configured to form the subject image on the imager ([0036]); and
a second holding frame (Nishina Annotated Fig. 11, a holding assembly comprising 8 and 11; [0033], [0055] & [0060]) configured to hold the imaging-unit main body ([0036]), wherein
a first abutting portion (Fig. 6A & Nishina Annotated Fig. 11, 23d; [0049] & [0055]) configured to abut on the second holding frame in a radial direction of the first holding frame ([0056]) is arranged on an outer surface of the first holding frame (See Nishina Annotated Fig. 11),
when a range holding the illumination unit in a direction along an optical axis of the illumination optical system in the first holding frame is a first axial-direction range (R1; see Nishina Annotated Fig. 11), and a range in the direction along the optical axis different from the first axial-direction range is a second axial-direction range (R2; see Nishina Annotated Fig. 11), the first abutting portion is arranged in the second axial-direction range (see Nishina Annotated Fig. 11), and
a cavity (Nishina Annotated Fig. 11, a gap g; [0045]) is formed by the first abutting portion in the first axial-direction range between the first holding frame and the second holding frame (see Nishina Annotated Fig. 11).
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Regarding Claim 2, Nishina discloses the imaging unit according to Claim 1. Nishina further discloses wherein the second axial-direction range is a range on a proximal end side relative to the first axial-direction range (see Nishina Annotated Fig. 11).
Regarding Claim 7, Nishina discloses the imaging unit according to Claim 1. Nishina further discloses wherein the first abutting portion is configured to determine a position of the first holding frame in a radial direction by abutting on the second holding frame ([0049]).
Regarding Claim 8, Nishina discloses the imaging unit according to Claim 1. Nishina further discloses wherein on the outer surface of the first holding frame, a second abutting portion (Nishina Annotated Fig. 11, 26; [0057]) configured to abut on the second holding frame in the direction along the optical axis is arranged (see Nishina Annotated Fig. 11), the second abutting portion being positioned on a distal end side relative to the first abutting portion (see Nishina Annotated Fig. 11).
Regarding Claim 9, Nishina discloses the imaging unit according to Claim 8. Nishina further discloses wherein the second abutting portion is configured to determine a position of the first holding frame in the direction along the optical axis by abutting on the second holding frame (see Nishina Annotated Fig. 11).
Regarding Claim 12, Nishina discloses the imaging unit according to Claim 1. Nishina further discloses wherein the first abutting portion has a ring shape extending throughout an entire circumferential direction centered around a center axis of the first holding frame ([0049]).
Regarding Claim 14, Nishina discloses the imaging unit according to Claim 8. Nishina further discloses wherein the second abutting portion has an arc shape extending along a circumferential direction centered around a center axis of the first holding frame (see Fig. 12).
Regarding Claim 15, Nishina discloses an endoscope comprising (Fig. 1, 1; [0029]):
an insertion portion (Fig. 1, 2; [0029]) configured to be inserted into an inside of a subject body ([0029]); and
an imaging unit (a distal end assembly; see Fig. 1 & Nishina Annotated Fig. 11) that is arranged at a distal end of the insertion portion ([0032]), wherein
the imaging unit includes
an illumination unit (Nishina Annotated Fig. 11, an illumination assembly comprising 22 & 24; [0038]) that includes an illumination optical system (Nishina Annotated Fig. 11, 22; [0038]) configured to irradiate light to a subject ([0038]);
a first holding frame (Nishina Annotated Fig. 11, 23; [0055]) configured to hold the illumination unit ([0038]);
an imaging-unit main body (Nishina Annotated Fig. 11, an imaging-unit assembly comprising 17a, 17b and 18; [0035] & [0058]) that includes an imager (Nishina Annotated Fig. 11, 18; [0058]) configured to capture a subject image ([0036]), and an observation optical system (Nishina Annotated Fig. 11, an observation optical assembly comprising 17a and 17b; [0035]) configured to form the subject image on the imager ([0036]); and
a second holding frame (Nishina Annotated Fig. 11, a holding assembly comprising 8 and 11; [0033], [0055] & [0060]) configured to hold the imaging-unit main body ([0036]),
on an outer surface of the first holding frame (see Nishina Annotate Fig. 11), a first abutting portion (Fig. 6A & Nishina Annotated Fig. 11, 23d; [0049] & [0055]) configured to abut on the second holding frame in a radial direction of the first holding frame is arranged ([0056]),
when a range holding the illumination unit in a direction along an optical axis of the illumination optical system in the first holding frame is a first axial-direction range (R1; see Nishina Annotated Fig. 11), and a range in the direction along the optical axis different from the first axial-direction range is a second axial-direction range (R2; see Nishina Annotated Fig. 11), the first abutting portion is arranged in the second axial-direction range (see Nishina Annotated Fig. 11), and
a cavity (Nishina Annotated Fig. 11, a gap g; [0045]) is formed by the first abutting portion in the first axial-direction range between the first holding frame and the second holding frame (see Nishina Annotated Fig. 11).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2020/0033583; US 2015/0316742; US 2012/0253129; US 2012/0209072; US 2012/0157773; US 2010/0063361; US 2007/0118020; US 2004/0242963; U.S. 6,767,322; U.S. 6,447,445 and U.S. 5,257,617.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN FLOYD LONDON whose telephone number is (571)272-4478. The examiner can normally be reached Monday - Friday: 10:00 am ET - 6:00pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL CAREY can be reached at (571)270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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