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 without traverse of Group I, drawn to a manipulator system, in the reply filed on 11/21/2025 is acknowledged.
Applicant’s election without traverse of Species I: Figures 1-19, in the reply filed on 11/21/2025 is acknowledged.
Claims 6-7 and 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II or nonelected Species II-IV, there being no allowable generic or linking claim.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
“a driving portion configured to pull and loosen the bending wire” in claim 1 as described in Para. [0051-0059] and [0065-0072] of Applicant’s specification.
“a control device configured to control the driving portion” in claim 1 as described in Para. [0087] of Applicant’s specification.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/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 this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/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 limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/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
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 1-12, 15, 17, and 19 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 1 recites the limitation “an amount of change in a bending shape of the bending portion compared to when the initialization operation is started falls between a predetermined range” in lines 8-9. It is unknown what the applicant intended for the control device to be comparing and what the control device is comparing it to. The claim as written compares a function, change in bending shape of the bending portion, to a time period, when the initialization operation is started. For the purposes of examination, “an amount of change in a bending shape of the bending portion compared to when the initialization operation is started falls between a predetermined range” is being interpreted as an amount of change in a bending shape of the bending portion falls within a predetermined range.
Claims 4, 15, and 17 recite the limitation “the bending wire is a first bending wire and a second bending wire” in l. 2 of claim 4, l. 2 of claim 15, and l. 2 of claim 17. It is unknown how many wires are structurally recited as one half of the bending wire could be indicated as the first bending wire and the other half of the bending wire could be indicated as the second bending wire. This interpretation is consistent with the only one wire established in independent claim 1. However, the claim language suggests that the first bending wire and the second bending wire operate independently, thus the first bending wire and the second bending wire are two independent wires. For the purposes of examination, “the bending wire is a first bending wire and a second bending wire” is being interpreted as two individual bending wires.
Claims 2-3, 5-12, and 19 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 1-2, 8, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Appl. Publ. No. 2011/0295063 A1 to Umemoto et al. (“Umemoto”).
Regarding claim 1, Umemoto discloses a manipulator system (an endoscope system 1; Fig. 2, paragraph 0029), comprising:
a manipulator including a bending portion (the endoscope 2 is provided with a bending portion 7, which is a bendable, movable portion; Fig. 2, paragraph 0030) and a bending wire configured to bend the bending portion (the bending portion 7 is connected via a pair of wires 8a and 8b to a driving unit 9 which makes up an actuator configured to remotely drive the bending portion 7; Fig. 3, paragraph 0030);
a driving portion configured to pull and loosen the bending wire (a driving unit 9 which makes up an actuator configured to remotely drive the bending portion 7; Fig. 3, paragraph 0030); and
a control device configured to control the driving portion (a control unit 11 configured to control driving operation of the driving unit 9; Fig. 3, paragraph 0031),
wherein the control device controls the driving portion to perform an initialization operation (slack adjustment process in Step S3; Fig. 4, paragraph 0095) that alternately repeats pulling and loosening of the bending wire so that an amount of change in a bending shape of the bending portion compared to when the initialization operation is started falls within a predetermined range (Step S22, via the control unit 11, the slack adjustment unit 15 rotates the motor 37 in a predetermined rotation direction corresponding to the specific bending direction for slack adjustment and in reverse rotation direction opposite to the rotation direction, rotating the motor 37 back and forth within an appropriate angular range; Fig. 9, paragraph 0137 and 0139).
Regarding claim 2, Umemoto discloses a manipulator system according to claim 1. Umemoto further discloses wherein the manipulator further includes an imaging portion provided on a distal end side of the bending portion (the image pickup device 29; Fig. 2, paragraph 0029), and
the predetermined range of the amount of change in the bending shape of the bending portion is a range in which a change in a field of view imaged by the imaging portion falls within a predetermined range (Step S22, via the control unit 11, the slack adjustment unit 15 rotates the motor 37 in a predetermined rotation direction corresponding to the specific bending direction for slack adjustment and in reverse rotation direction opposite to the rotation direction, rotating the motor 37 back and forth within an appropriate angular range; Fig. 9, paragraph 0137 and 0139). Since the imaging portion is provided on the distal end side of the bending portion, a change in bending angle of the bending portion would result in a change in a field of view as well. Therefore, the predetermined angular range corresponds to a predetermined range for the change in field of view.
Regarding claim 8, Umemoto discloses a manipulator system according to claim 1. Umemoto further discloses wherein the bending wire is a pair of bending wires that bend the bending portion vertically or horizontally (two pairs of wires 8u and 8d and 8l and 8r for bending in the up-and-down direction and left-and-right direction are passed through the insertion portion 6; Fig. 3, paragraph 0057),
the driving portion is a pulley around which the bending wire is wound, and the pulley pulls one of the pair of bending wires and loosens the other of the pair of bending wires by rotating (along with the rotations of the motors 37a and 37b, the respective pulleys 36a and 36b rotate, pulling and relaxing the respective wires 8u and 8d and 8l and 8r looped over the respective pulleys 36a and 36b; Fig. 3, paragraph 0060), and
the control device performs the initialization operation by moving the pulley back and forth (Step S22, via the control unit 11, the slack adjustment unit 15 rotates the motor 37 in a predetermined rotation direction corresponding to the specific bending direction for slack adjustment and in reverse rotation direction opposite to the rotation direction, rotating the motor 37 back and forth within an appropriate angular range; Fig. 9, paragraph 0137 and 0139).
Regarding claim 12, Umemoto discloses a manipulator system according to claim 1. Umemoto further discloses wherein the manipulator has a tension sensor that detects a tension of the bending wire (there are one or two pairs of tensions sensors 41a and 41b; Fig. 12, paragraph 0176) and an encoder that detects an amount of pulling of the bending wire (the encoders 38a and 38b sense the rotation angles of the motors 37a and 37b or pulleys 36a and 36b and output sensing signals; Fig. 12, paragraph 0061), and
the control device terminates the initialization operation based on the tension and the amount of pulling of the bending wire (in step 25, based on the information about the rotation angles .theta1a. and .theta.1b. in the two directions, the slack adjustment unit 15 corrects (adjusts) the driving condition which correlates the rotation angles and bending angle at the coordinate position Po with each other before the slack adjustment; Fig. 9, paragraph 0145). The driving condition is adjusted based on the tension and amount of pulling of the bending wire data collected. Upon completion of this step, the initialization operation can be terminated (If no setting has been made to return to the initial state, processes in Fig. 9 are terminated; Fig. 9, paragraph 0154).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Umemoto.
Regarding claim 3, Umemoto discloses the manipulator system according to claims 1-2. However, Umemoto does not explicitly disclose wherein the predetermined range is 20% or less. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the predetermined angular range of Umemoto to equal a predetermined change in the field of view in the range of 20% or less. In a situation in which the predetermined range is not provided, as is the case with Umemoto, it would have been obvious to one of ordinary skill in the art to choose any appropriate angular range for bending of an endoscope.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Umemoto in view of U.S. Patent Appl. Publ. No. 2015/0105615 A1 to Kato (“Kato”).
Regarding claim 4, Umemoto discloses the manipulator system according to claim 1. Umemoto further discloses wherein the bending wire is a first bending wire that bends the bending portion vertically or horizontally (two pairs of wires 8u and 8d and 8l and 8r for bending in the up-and-down direction and left-and-right direction are passed through the insertion portion 6; Fig. 3, paragraph 0057),
the driving portion is a pulley, the pulley including a first pulley around which the first bending wire is wound (along with the rotations of the motors 37a and 37b, the respective pulleys 36a and 36b rotate, pulling and relaxing the respective wires 8u and 8d and 8l and 8r looped over the respective pulleys 36a and 36b; Fig. 3, paragraph 0060), and
the control device performs the initialization operation by rotating the first pulley (Step S22, via the control unit 11, the slack adjustment unit 15 rotates the motor 37 in a predetermined rotation direction corresponding to the specific bending direction for slack adjustment and in reverse rotation direction opposite to the rotation direction, rotating the motor 37 back and forth within an appropriate angular range; Fig. 9, paragraph 0137 and 0139).
However, Umemoto does not explicitly disclose wherein the bending wire is a first bending wire and a second bending wire that bend the bending portion vertically or horizontally,
the pulley including a first pulley around which the first bending wire is wound, and a second pulley around which the second bending wire is wound, and
the control device performs the initialization operation by rotating the first pulley and the second pulley.
Kato teaches wherein the bending wire is a first bending wire and a second bending wire that bend the bending portion vertically or horizontally (wires 4A and 4B which deform the deformable portion; Fig. 1A-C, paragraph 0020) and the driving portion is a pulley, the pulley including a first pulley around which the first bending wire is wound, and a second pulley around which the second bending wire is wound (the control wires 4A and 4B are fixed at the points A1 and A2 at one end in Fig. 1 and are connected to driving pulleys 6A and 6B at the other ends; Fig. 1A-C, paragraph 0036). Kato teaches the use of two pulleys for independently operating the two control wires which is desirable because the control wires may be driven with high control precision at the position of the tip portion and with less production of slack (paragraph 0094-0096).
Kato is considered to be analogous to the claimed invention because it is in the same field of endoscopes with a driving portion comprising a pulley. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the driving portion of Umemoto to incorporate the teachings of Kato by adding an additional pulley for operating the bending wire as two independent bending wires. Doing so would allow the control wires to be driven with high control precision at the position of the tip portion and with less production of slack, as recognized by Kato.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Umemoto in view of W.O. 2019/155617 A1 to Hirokazu (“Hirokazu”).
Regarding claim 10, Umemoto discloses the manipulator system according to claim 1. Umemoto further discloses wherein the manipulator includes an insertion portion having the bending portion (the endoscope 2 is provided with a bending portion 7, which is a bendable, movable portion, on a distal end side of an insertion portion 6; Fig. 2, paragraph 0030), and the control device acquires a shape of the insertion portion (a bending angle detection unit 12 configured to detect a bending angle of the bending portion 7; Fig. 3, paragraph 0031). However, Umemoto does not explicitly disclose starting the initialization operation when an amount of change in the shape of the insertion portion is equal to or greater than a predetermined amount.
Hirokazu teaches wherein a manipulator includes an insertion portion having the bending portion (the insertion portion 11 includes … a bending portion 13; Fig. 1, paragraph 0014), and the control device acquires a shape of the insertion portion (the insertion shape calculation device 70 detects at least a part of the shape of the insertion portion 11; Fig. 2, paragraph 0030), and starts the initialization operation when an amount of change in the shape of the insertion portion is equal to or greater than a predetermined amount (the situation determination unit 104 determines whether or not the insertion inot 11 is bent based on the determination result in step S102 (that is, whether or not the determination result is (ii)). If it is determined that bending has occurred (step 103-Yes), the process proceeds to step S104, and the bending removal process is executed; Fig. 6A, paragraphs 0050-0057). Hirokazu teaches the benefit of starting the initialization process upon detection of a bend in the insertion portion helps to perform a smooth insertion operation (paragraph 00104 and 00106).
Hirokazu is considered to be analogous to the claimed invention because it is in the same field of endoscopes with a control device for controlling the electronic driving of the endoscope. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the initialization operation of Umemoto to incorporate the teachings of Hirokazu by starting the initialization operation when an amount of change in the shape of the insertion portion is equal to or greater than a predetermined amount. Doing so would help to perform a smooth insertion operation, as recognized by Hirokazu.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Umemoto in view of U.S. Patent Appl. Publ. No. 2019/0380617 A1 to Oosake et al. (“Oosake”).
Regarding claim 10, Umemoto discloses the manipulator system according to claim 1. Umemoto further discloses wherein the manipulator has an internal path through which a treatment tool can be inserted (a channel 32 is provided in the insertion portion 6 to allow passage of a treatment instrument 31; Fig. 2, paragraph 0051). However, Umemoto does not explicitly disclose a treatment tool sensor that detects that the treatment tool has been inserted through the internal path, and the control device starts the initialization operation when the treatment tool sensor detects the treatment tool.
Oosake teaches wherein the manipulator has an internal path through which a treatment tool can be inserted (the channel inserted into the endoscope 12 is, for example, a forceps channel 401 for allowing treatment tools, such as forceps, to be inserted therethrough and protruded toward the observation target from the distal end part 12d; Fig. 11, paragraph 0112), and a treatment tool sensor that detects that the treatment tool has been inserted through the internal path (a passage sensor 403 that detects passage of treatment tools, such as forceps, is provided in the middle of the forceps channel 401; Fig. 11, paragraph 0113), and the control device starts the operation when the treatment tool sensor detects the treatment tool (the discrimination processing is started or ended in a case where it is detected that a distal end or the like of the treatment tool has passed through the forceps channel 401; Fig. 11, paragraph 0113).
Oosake is considered to be analogous to the claimed invention because it is in the same field of endoscopes with a treatment tool channel. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the treatment tool channel of Umemoto to incorporate the teachings of Oosake by adding a treatment tool sensor for detecting that the treatment tool has been inserted through the channel. One of ordinary skill in the art understands that inserting a treatment tool in the channel will change the bending characteristics of the endoscope. As such, it would have been obvious to one of ordinary skill in the art to start the initialization operation once the treatment tool sensor detects that the treatment tool has been inserted.
Allowable Subject Matter
Claims 5 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 5, Umemoto, as previously modified by Kato, discloses the manipulator system according to claims 1 and 4. However, Umemoto, as modified by Kato does not explicitly disclose wherein the control device alternately performs a first step of pulling the first bending wire and pulling the second bending wire, and a second step of loosening the first bending wire and loosening the second bending wire, while substantially matching an amount of change in a tension of the first bending wire and an amount of change in a tension of the second bending wire.
U.S. Patent Appl. Publ. No. 2009/0287054 A1 to Dejima teaches substantially matching an amount of change in a tension of the first bending wire and an amount of change in a tension of the second bending wire (substantially the same magnitude of pre-tension is applied to wires 6A and 6B respectively; Fig. 4A-B, paragraph 0030). However, Dejima does not explicitly teach wherein the control device alternately performs a first step of pulling the first bending wire and pulling the second bending wire, and a second step of loosening the first bending wire and loosening the second bending wire.
Additionally, there is no reason, teaching, or suggestion provided with any prior art of record to modify the above initialization operation to have the above features.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent Appl. Publ. No. 2020/0074655 A1 to Sakamoto teaches the calculation of amount of change in bending angle of the distal tip of an endoscope by determining the distance by which the image visual field is changed as described in Fig. 6 and its descriptive text.
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/OLIVIA GRACE STARKEY/Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795