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 .
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 25 June, 2026 has been entered.
Response to Amendment
The Amendment filed on 25 June, 2026 has been fully considered and entered.
Response to Arguments
Applicant's arguments filed 25 June, 2026 have been fully considered but they are not persuasive.
Applicant asserts that Broome only discloses the use of a reflective prism that does not cause refraction and thus does not produce color dispersion.
Examiner disagrees. The prism is inherently dispersive, since it induces chromatic aberration (see Broome col. 7, lines 55-60). The claim also requires that the light passing the dispersive optics is split at the exit face depending on wavelength, which was addressed in the previous office action. In particular, Examiner pointed to col. 7, lines 23-28 which describes the presence of chromatic aberration. Chromatic aberration is caused by an optical medium having a refractive index that varies with wavelength, which means that the optical medium is inherently dispersive. Furthermore, none of the quoted text of Broome on pages 8-9 of the remarks filed on 25 June, 2026 contradicts that the prism is inherently a dispersive prism or says that the prism does not cause refraction and thus does not produce color dispersion.
Applicant asserts that because the prism used in conjunction with the present invention is deliberately designed with a particularly high dispersity which is significantly greater than that of endoscopes with reflective wedge prisms used for field-of-view reflection, Broom does not disclose, teach, or suggest dispersive optics that are formed from a dispersive prism as required by amended independent claim 1.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a “particularly high dispersity”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant asserts that Broome only teaches to form the micro-optics in a conventional manner and in particular if the micro-optics of Broome would be formed monolithically, the optical elements could not be machined or otherwise fabricated.
This argument is not persuasive because the claim is directed to a device, not the method of forming a device. Therefore, the term “monolithic” is interpreted according to the structural features it requires of the final device, where “monolithic” is interpreted as requiring a component to be a unitary piece.
Additionally, upon further reflection, the claim is even broader than this, due to the vague, or at least overly broad, term “micro-optics”, which does not limit the structure to a single component. Since “micro-optics” could refer to a single component or multiple components in an assembly, “the micro-optics are monolithic” could be fairly interpreted as a single component being a single, i.e. monolithic, piece or a plurality of components, each of said components being single, i.e. monolithic, pieces. The latter interpretation has been adopted in this office action.
Claim Rejections - 35 USC § 102
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, 5-6, 8, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Broome (US Patent No. 5,341,240; hereinafter Broome).
Regarding claim 1: Broome disclosesAn optical system for an endoscope (see Figs. 2-3) comprising: micro-optics (Figs. 2-3, objective group 24 include a plurality of micro-optics, in particular each of the components 34, 40, and 42 are considered to be micro-optics), wherein the micro-optics comprise an entry face (Fig. 3, the micro-optics comprise an entry face S.sub.1) and an exit face (Fig. 3, the micro-optics comprise an exit face S.sub.14), the exit face being connectable to an end face of a fiber endoscope (Fig. 3, transfer module assembly 26); dispersive optics (Fig. 3, prism 36 and lens 38 are dispersive optics), wherein the dispersive optics are arranged between the entry face and the exit face of the micro-optics so that light passing the dispersive optics is split at the exit face depending on the wavelength (see col. 7, lines 23-28, the presence of chromatic aberration means that the light passing the dispersive optics is split at the exit face depending on the wavelength); and an aperture (col. 12, lines 45-58 and Fig. 9, region 108 is an aperture; alternatively, baffle 74 creates an aperture between a surface of the dispersive optics and the entry face), wherein the aperture is arranged between the entry face and the dispersive optics, wherein the micro-optics are monolithic (the micro-optics are monolithic, since the end window element 34 is a monolithic piece of glass, and lenses 40 and 42 are monolithic pieces of molded plastic), wherein the dispersive optics comprise a first surface (S.sub.3) directed towards the entry face of the micro-optics and a second surface (S.sub.8) directed towards the exit face of the micro-optics,and wherein the dispersive optics comprise a dispersive prism (the dispersive optics, as applied above, includes prism 36 which is inherently a dispersive prism, as it comprises a medium that has a wavelength-dependent refractive index).
Regarding claim 5: Broome disclosesThe optical system according to claim 1 (as applied above), wherein the dispersive optics comprise a prism having an inclined surface (Fig. 3, S.sub.5) with respect to the entry face and/or the exit face of the micro-optics (the surface S.sub.5 is inclined with respect to the entry face and the exit face of the micro-optics).
Regarding claim 6: Broome disclosesThe optical system according to claim 1 (as applied above), wherein at least one of the first surface or the second surface of the dispersive optics is curved (S.sub.8 is curved).
Regarding claim 8: Broome disclosesThe optical system according to claim 1 (as applied above), wherein the splitting of the light on the exit face takes place along an axis perpendicular to an axial direction of the micro-optics or the endoscope (see col. 7, lines 23-27; lateral chromatic aberration takes place along an axis perpendicular to an axial direction of the micro-optics or the fiber endoscope).
Regarding claim 13: Broome disclosesThe optical system according to claim 1 (as applied above) , wherein a cavity is provided between the entry face and the dispersive optics or between the dispersive optics and the exit face (Fig. 3, the cavity between S.sub.3 and S.sub.2 is provided between the entry face and the dispersive optics or between the dispersive optics and the exit face).
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.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Broome (US Patent No. 5,341,240; hereinafter Broome).
Regarding claims 9 and 10: Broome discloses the optical system according to claim 1, as applied above. Broome further discloses that the optical system further comprises a housing (see col. 19, lines 62-end; tube or bore), wherein the dispersive optics are connected to the housing (they are contained within the housing, thereby connected to it). Broome fails to disclose whether the housing and the dispersive optics consist of the same material (as claimed in claim 9) or of different materials (as claimed in claim 10). However, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Applicant has not disclosed that using such features provides an advantage, is used for a particular purpose, or solves a stated problem (for Broome). One of ordinary skill in the art, furthermore, would have expected Broome to perform equally well with such features as those outlined for the housing. Therefore, it would have been an obvious matter of common skill and design choice to further modify Broom to obtain the invention as specified in claims 9 and 10. See KSR v. Teleflex, 127 S.Ct. 1727 (2007).
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Broome (US Patent No. 5,341,240; hereinafter Broome) in view of Ning (US Patent No. 5,359,453; hereinafter Ning).
Regarding claim 18: Modified Broome teachesAn endoscope comprising: the optical system according to claim 1 (as applied above), the micro-optics being connected to a first relay section end and a second relay section end being connected to imaging optics (Fig. 2, non-disposable ocular 20), wherein the imaging optics comprise a dispersive element with a dispersion so that the splitting of the light is reversed by the dispersive optics of the micro-optics (see col. 7, lines 28-32).
Modified Broome therefore teaches the endoscope according to claim 18, except that the relay lens section is a series of lenses separated by glass rods, rather than a fiber having a first fiber end and a second fiber end, wherein the fiber is formed as an optical waveguide bundle. However, Ning shows that a coherent fiber optical bundle (i.e. a fiber having a first fiber end and a second fiber end, wherein the fiber is formed as an optical waveguide bundle) is an equivalent structure in the art. Therefore, because these two relay lens sections were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute a fiber having a first fiber end and a second fiber end, wherein the fiber is formed as an optical waveguide bundle, for the relay lens section comprising a series of lenses and glass rods disclosed by Broome (See MPEP §2144.06).
Regarding claim 19: Modified Broome teachesThe endoscope according to claim 18 (as applied above), wherein the dispersive element of the imaging optics can be changed to change the dispersion (changing the dispersive element can change the dispersion; therefore the modified Broome device is understood to meet this claim limitation), with the position or the orientation of the dispersive element being changeable (the position and the orientation of the dispersive element are considered to be changeable).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Broome (US Patent No. 5,341,240; hereinafter Broome) in view of Falaggis et al. (Freeform optics: Introduction; Optics Express, 14 Feb 2022; copy provided with Office Action mailed on 12 November, 2025; hereinafter Falaggis).
Modified Broome teaches the optical system according to claim 1, as applied above. Broome fails to teach that the first surface and/or the second surface are non-rotationally symmetrical and designed as a freeform surface. However, before the effective filing date of the claimed invention, it was known to use freeform optics in endoscopy applications, as taught by Falaggis (see first paragraph of introduction). As also taught by Falaggis, freeform prisms were also known (see first paragraph of introduction). The design of freeform optics, including freeform prisms, allows practitioners of the art to optimize for many parameters, such as cost-effectiveness, compactness, and beam shaping (see Design of freeform optics – roadmaps and starting points and Design of freeform optics – beam shaping). This framework allows one of ordinary skill in the art to customize the shape of the optical components, more easily enabled by 3D printing (see 3rd paragraph of introduction). The shape customization would allow for non-rotationally symmetric surfaces, which could, for example, allow for tilting the optical path. In order to better customize the optical properties of the dispersive optics, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the Broome device by designing the dispersive optics surfaces as freeform surfaces that are non-rotationally symmetrical, since these were previously known in the art.
Claim 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Broome (US Patent No. 5,341,240; hereinafter Broome) or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Broome (US Patent No. 5,341,240; hereinafter Broome) in view of Gmeiner et al. (US 2018/0344130; hereinafter Gmeiner).
Broome discloses the optical system according to claim 1, as applied above. Broome teaches that some of the micro-optics are molded plastic while others of the micro-optics are formed from glass. However, the claimed phrase “wherein the micro-optics are formed by 3D laser writing” is being treated as a product-by-process limitation. As set forth in MPEP 2113, product-by-process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113.
Thus, even though Broome does not disclose forming any of the micro-optics by 3D laser writing, it appears that the product in Broome would be the same or similar as that claimed, especially since the micro-optics are not claimed to be a single unitary piece formed by 3D laser writing but, as claimed, could be formed as multiple pieces wherein the process of forming includes 3D laser writing. Moreover, before the effective filing date of the claimed invention, Gmeiner taught that high quality micro-optical endoscope probe tips can be fabricated using transparent materials by a 3D laser writing process (see Gmeiner, paragraph 0134-0135). In order to form a high quality micro-optical probe tip, it would have alternatively been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to employ 3D laser writing to form the micro-optics of the Broome device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kirsten D Endresen whose telephone number is (703)756-1533. The examiner can normally be reached Monday to Thursday.
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/KIRSTEN D. ENDRESEN/Examiner, Art Unit 2874
/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874
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