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.
Response to Amendment
The amendment filed on 12 February, 2026 has been fully considered and entered. In response to the drawings amendments and explanation regarding the drawings objections, the drawings objections are withdrawn. In response to the amendments to the claims, the previously raised claim objection and some of the rejections under 35 U.S.C. 112(b) are withdrawn. The rejections under 35 U.S.C. 112(b) which are maintained are repeated below.
Response to Arguments
Applicant’s arguments with respect to claims 1-2, 5-11, 13, and 18-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, 5-10, 13, and 18-19 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.
Regarding claim 1: Claim 1 recites the limitation “an endoscope” in line 1 and “a fiber endoscope” in line 3. Are these the referring to the same component or a different component? For the purpose of examination, the claim is considered to include either interpretation.
Also regarding claim 1: The claimed terms “micro-optics” and “dispersive optics” are vague, making it unclear what structure the claim includes. How many components does micro-optics refer to? The same question can be asked for the dispersive optics. If dispersive optics and micro-optics refer to one or more micro-optical components and dispersive optics refer to one or more dispersive optical components, the claim should make this clear. For the purpose of examination, “micro-optics” is interpreted as one or more micro-optical components and “dispersive optics” is interpreted as one or more dispersive optical components.
Regarding claim 5: Claim 1 recites that the dispersive optics comprise a prism. Claim 5 additionally recites that the dispersive optics comprise a prism. Is this the same prism or an additional prism? For the purpose of examination, the claim is considered to include either interpretation.
Regarding claim 6: It is unclear what is meant by “a first surface in the direction of the entry face and a second surface in the direction of the exit face” since the claim does not provide a reference point. For the purpose of examination, it is interpreted that the dispersive optics include a first surface and a second surface, and the entry face is closer to the first surface than the second surface, and the exit face is closer to the second surface than the first surface.
Regarding claim 18: “a first fiber end” and “a second fiber end” are defined in line 2 and again in lines 3-4. Are they the same first and second fiber ends or different first and second fiber ends? For the purpose of examination, the claim is considered to include either interpretation.
Regarding claims 5-10, 13, and 18-19: These dependent claims inherently contain all of the deficiencies of any base or intervening claims from which they depend.
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.
Claim(s) 1, 5-6, 8-10, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over 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), wherein the micro-optics comprise an entry face (Fig. 3, S.sub.1) and an exit face (Fig. 3, 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 lenses 38, 40, and 42 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,and wherein the dispersive optics comprise a dispersive prism (the dispersive optics, as applied above, includes prism 36 which is inherently a dispersive prism).
Broome fails to teach that the micro-optics are monolithic, but Broome does show that the micro-optics are in direct, continuous contact with each other (see Fig. 3), and further teaches that the components are all molded of plastic (see col. 6, lines 22-25). While the micro-optics of the Broome device are shown to be separate pieces, it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893). It would have therefore been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the Broome device by forming the micro-optics integrally, and in doing so, the micro-optics would also be considered monolithic. This would allow one of ordinary skill in the art to have better control over the relative positioning of the micro-optics in the device and thus have better control of the light beam.
Regarding claim 5: Modified Broome teachesThe 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: Modified Broome teachesThe optical system according to claim 1 (as applied above), wherein the dispersive optics have a first surface in the direction of the entry face (S.sub.3) and a second surface (S.sub.12) in the direction of the exit face, with at least one of the first surface or the second surface being curved (S.sub.12 is curved).
Regarding claim 8: Modified Broome teachesThe 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 fiber 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 claims 9 and 10: Modified Broome teaches 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).
Regarding claim 13: Modified Broome teachesThe optical system according to claim 1 (as applied above) , wherein a cavity is provided between the entry face and the dispersive optics and/or between the dispersive optics and the exit face (Fig. 3, both the cavity between S.sub.14 and S.sub.12 and the cavity between S.sub.3 and S.sub.2 are cavities provided between the entry face and the dispersive optics and/or between the dispersive optics and the exit face).
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 and/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 further discloses that the dispersive optics have a first surface in the direction of the entry face and an opposite second surface in the direction of the exit face (see Fig. 3). 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.
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.
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/KIRSTEN D. ENDRESEN/Examiner, Art Unit 2874
/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874