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 Group I, claims 1-12 in the reply filed on 2/27/2026 is acknowledged. The traversal is on the ground(s) that the inventions include a shared, special technical feature of an image sensor unit that has greater lateral dimensions than an objective lens and that it makes a contribution over , alone or in combination, the teachings of Kodama, Igarashi, and Fujimori. Examiner respectfully disagrees.
The applicant’s arguments are on the grounds that Fujimori makes it clear that the optical element has to have larger or at least equal lateral dimensions when compared to the lateral dimensions of the image pickup device because applying the image sensor units to the previously cut lenses is not possible in Fujimori. However, Fujimori teaches that the lens unit can be smaller than the image pickup device (Fig. 6, paragraph 0057). Fujimori teaches that the individual pieces of lens units are cut and then bonded to the image pickup device (paragraph 0055-0057). Therefore, the technical feature of an image sensor unit that has greater lateral dimensions than an objective lens is not a special technical feature as it does not make a contribution over Fujimori.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/27/2026.
Claim Objections
Claims 1-12 are objected to because of the following informalities:
In claims 1-12, line 1, “an endosopic instrument” should read “an endoscopic instrument”
In claim 1, lines 6-7, and claim 3, line 3, “the arrangement” should read “the arrangement of lens elements”
In claim 5, line 2, “an aspherically-shaped surface” should read “an aspherical surface.” This suggested language eliminates potential clarity issues arising from lack of antecedent basis.
In claim 9, lines 3-4, “wherein the front side and/or the rear side has/have a light reflectance value of less than 10%” should read “wherein one or both of the front side and the rear side have a light reflectance value of less than 10%.” The suggested language is provided for clarity and readability while maintaining the intended scope of the claim.
In claim 11, line 2, “a distal end of the shafts” should read “a distal end of the shaft”
In claim 13, lines 8-9, “objective lenses” should read “the objective lenses”
In claim 13, lines 17-18, “a second imaging channel section which for receiving” should read “a second imaging channel section for receiving”
In claim 14, line 1, “claim 13 wherein” should read “claim 13, wherein”
Appropriate correction is required.
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 1-14 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.
Claim 1 recites the limitation "the lens" in line 8. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, “the lens” is being interpreted as “the objective lens.”
Claims 1 and 13 recite the limitation "the first imaging channel section" in l. 12-13 of claim 1 and l. 17 and 19 of claim 13. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, “the first imaging channel section” is being interpreted as “the first distal imaging channel section.”
Regarding claim 2, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of examination, “preferably hexagonal or octagonal” is being interpreted as “hexagonal or octagonal.”
Claims 3-4 and 7 recite the limitation "the objective lens elements" in l. 2 of claim 3, l. 2 of claim 4, and l. 2 of claim 7. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, “the objective lens elements” is being interpreted as “the lens elements.”
Claim 5 recites the limitation "the edge" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, “the edge” is being interpreted as “the flat edge.”
Claims 5-6 recite the limitation "the lens" in l. 2 of claim 5 and l. 2 of claim 6. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, “the lens” is being interpreted as “the at least one lens.”
Claim 8 recites the limitation "the lens" in line 2 of claim 8. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, “the lens” is being interpreted as “a lens included the lens elements.”
Claims 8 and 9 recite the limitation "the diaphragm" in l. 2 of claim 8 and l. 2 of claim 9. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, “the diaphragm” is being interpreted as “the at least one diaphragm.”
Claim 13 recites the limitation "the layers" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, “the layers” is being interpreted as “the several wafer layers.”
Claim 13 recites the limitation "the incision directions" in lines 6-7. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, “the incision directions” is being interpreted as “incision directions.”
Claim 13 recites the limitation "the objective lens" in line 14. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, “the objective lens” is being interpreted as “the objective lenses.”
Claim 10-12 and 14 are rejected as being dependent upon claims previously rejected under 35 USC § 112(b).
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.
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.
The present rejection(s) reference specific passages from cited prior art. However, Applicant is advised that the rejections are based on the entirety of each cited prior art. That is, each cited prior art reference “must be considered in its entirety”. (See MPEP 2141.02(VI)) Therefore, Applicant is advised to review all portions of the cited prior art if traversing a rejection based on the cited prior art.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Appl. Publ. No. 2019/0082944 A1 to Fujimori (“Fujimori”) in view of U.S. Patent Appl. Publ. No. 2021/0401267 A1 to Kodama et al. (“Kodama”).
Regarding claim 1, Fujimori discloses an endoscopic instrument (endoscope 9; Fig. 1, paragraph 0016), comprising:
a tubular shaft with a distal tip (the insertion section 73 includes the rigid distal end portion 73A; Fig. 1, paragraph 0018);
an objective lens at the distal tip of the tubular shaft (an image pickup unit for endoscope 1 (hereinafter referred to as an “image pickup unit 1”) is disposed in a rigid distal end portion 73A of an insertion section 73 in an endoscope 9; Fig. 2, paragraph 0016), wherein the objective lens comprises an arrangement, separated out of a multilayer wafer package, of lens elements that are connected to each other and each have predetermined optical properties and follow each other along an optical axis (the image pickup unit 1 is a wafer-level image pickup unit manufactured by cutting a bonded wafer obtained by stacking wafers each having a plurality of functional elements arranged therein in a matrix shape into pieces. A resin adhesive or the like is used to bond the device wafers; Fig. 2, paragraphs 0045-0046), wherein the arrangement has a polygonal and at least hexagonal cross-section that is perpendicular to the optical axis (note that although the image pickup unit 1 is a rectangular parallelepiped, the image pickup unit 1 may be a polygonal column such as a hexagonal column or a circular cylinder by processing at the time of or after cutting; paragraph 0052); and
an image sensor unit connected in a bonded manner to the objective lens (the image pickup unit 1 includes … an image pickup device 50 to which a cover glass 59 has adhered; Fig. 2, paragraph 0022), wherein the image sensor unit has greater lateral dimensions than the objective lens (the respective sizes in cross section in a direction perpendicular to the optical axis of the image pickup device and the lens unit 2A may be the same, or one of the image pickup device and the lens unit 2A may be larger than the other; Fig. 6, paragraph 0056).
However, Fujimori fails to explicitly disclose wherein the distal tip has an imaging channel, wherein the lens is inserted in the imaging channel in an interlocking, friction-locking and/or bonded manner, wherein the imaging channel comprises a first distal imaging channel section in which the objective lens is inserted, and a second imaging channel section arranged proximally of the first imaging channel section that has a greater inner diameter than the first imaging channel section, and wherein the image sensor unit is arranged in the second imaging channel section.
Kodama teaches an endoscopic instrument (an endoscope 1; Fig. 1, paragraph 0033), comprising:
a tubular shaft with a distal tip (the insertion portion 2 is a tubular member having flexibility, in which a distal end portion 6; Fig. 1, paragraph 0035);
an objective lens at the distal tip of the tubular shaft (lens unit 30; Fig. 10, paragraph 0046), wherein the objective lens comprises an arrangement, separated out of a multilayer wafer package, of lens elements that are connected to each other (the lens unit 30 for image pickup is manufactured, for example, by preparing a plurality of lens wafers in which lenses are formed on a base material such as a glass substrate, and stacking and dicing the lens wafers; Fig. 4, paragraph 0046) and each have predetermined optical properties and follow each other along an optical axis, wherein the arrangement has a polygonal cross-section that is perpendicular to the optical axis (the shape in plain view of the image pickup unit 25 (an the observation window 6a and the like) can be a polygon (for example, a pentagon) other than the rectangle; Fig. 14, paragraph 0111), wherein the distal tip has an imaging channel (hollow space between the mounting surface 94 and the distal surface of the front wall 100; Fig. 21), wherein the lens is inserted in the imaging channel in an interlocking, friction-locking and/or bonded manner (a lens unit 30 for image pickup of the image pickup unit 25 that is mounted on the mounting surface 94 is inserted into the image pickup unit holding hole 105, and then is sealed by an adhesive agent or the like; Fig. 19; paragraph 0137), wherein the imaging channel comprises a first distal imaging channel section in which the objective lens is inserted (image pickup unit holding hole 105; Fig. 21), and a second imaging channel section arranged proximally of the first imaging channel section that has a greater inner diameter than the first imaging channel section (space between the proximal surface of the front wall 100 and the mounting surface 94; Fig. 21); and
an image sensor unit connected in a bonded manner to the objective lens, wherein the image sensor unit is arranged in the second imaging channel section (an image pickup device 32 that is connected to the lens unit 30 for image pickup struck on the cover glass 31 via an adhesive layer (not illustrated) are integrally package; Fig. 21, paragraph 0046). Kodama teaches that bonding the objective lens within the imaging channel helps to form a seal (paragraph 0137).
Kodama is considered to be analogous to the claimed invention because it is in the same field of an optical lens unit at the distal tip of an endoscope. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the endoscope of Fujimori to incorporate the teachings of Kodama by using an adhesive to bond the objective lens and image sensor unit within an imaging channel in the distal tip of the endoscope. Doing so would help to form a seal, thereby protecting the internal electrical components of the endoscope, as recognized by Kodama.
Regarding claim 2, Fujimori, as previously modified by Kodama, discloses the endoscopic instrument according to claim 1. Fujimori further discloses wherein the cross-section of the objective lens is equilaterally polygonal and preferably hexagonal or octagonal (note that although the image pickup unit 1 is a rectangular parallelepiped, the image pickup unit 1 may be a polygonal column such as a hexagonal column or a circular cylinder by processing at the time of or after cutting; paragraph 0052).
Regarding claim 3, Fujimori, as previously modified by Kodama, discloses the endoscopic instrument according to claim 1. Fujimori further discloses wherein the objective lens elements comprise a first end plate (the first optical element 10 has a base a first parallel flat plate glass 11 having the first main surface 10 SA as a light incidence surface disposed to be exposed to the outside at a distal end of the rigid distal end portion 73A; Fig. 3, paragraph 0023) and a second end plate (the image pickup device 50 to which the cover glass 59 has adhered are stacked to adhere to one another; Fig. 2, paragraph 0026) which delimit the arrangement at end faces that are opposite to each other (#11 and #59; Fig. 3).
Regarding claim 4, Fujimori, as previously modified by Kodama, discloses the endoscopic instrument according to claim 1. Fujimori further discloses wherein the objective lens elements comprise at least one lens (a resin lens 22 with a positive power is disposed on a fourth main surface 20SB of the second parallel flat glass 21 composed of optical glass; Fig. 3, paragraph 0027).
Regarding claim 5, Fujimori, as previously modified by Kodama, discloses the endoscopic instrument according to claims 1 and 4. Fujimori further discloses wherein the lens has as an aspherically-shaped surface (lens 22 has an aspherically-shaped surface; Fig. 3) which is surrounded by a flat edge wherein a spacer is arranged on the edge and extends outwards along the optical axis over the aspherical surface (the second spacer 40 [is] composed of a metal or silicon, for example, composing a sidewall constituting a space (through hole) as an optical path; Fig. 4, paragraphs 0025-0026).
Regarding claim 6, Fujimori, as previously modified by Kodama, discloses the endoscopic instrument according to claims 1 and 4. Fujimori further discloses wherein the lens is arranged on a flat and continuous surface of a glass substrate (a resin lens 22 with a positive power is disposed on a fourth main surface 20SB of the second parallel flat glass 21 composed of optical glass; Fig. 3, paragraph 0027).
Regarding claim 7, Fujimori, as previously modified by Kodama, discloses the endoscopic instrument according to claim 1. Fujimori further discloses wherein the objective lens elements have at least one diaphragm (the flare aperture 31 and the brightness aperture 32 each having ac circular opening at its center are manufactured by coating with a metal film using an evaporation method, a sputtering method, or the like, screen printing using a black paint, ink jet printing, or processing of a metal foil, for example; Fig. 3, paragraph 0030).
Regarding claim 8, Fujimori, as previously modified by Kodama, discloses the endoscopic instrument according to claims 1 and 7. Fujimori further discloses wherein the diaphragm is arranged in front of the lens in the optical axis (a flare aperture 31 is disposed between the first optical element 10 and the first spacer 30, and a brightness aperture 32 is disposed between the first spacer 30 and the second optical element 20; Fig. 3, paragraph 0028).
Regarding claim 9, Fujimori, as previously modified by Kodama, discloses the endoscopic instrument according to claims 1 and 7. Fujimori further discloses wherein the diaphragm has a front side and a rear side in relation to the optical axis, wherein the diaphragm reduces reflected light (the flare aperture 31 cuts unnecessary light such as ghost or flare; Fig. 3, paragraph 0028). However, Fujimori does not explicitly disclose wherein the front side and/or the rear side has/have a light reflectance value of less than 10%.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the front side or the rear side of the diaphragm of Fujimori to have a light reflectance value of less than 10% since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the diaphragm of Fujimori would not operate differently with the claimed light reflectance value as the diaphragm is configured to cut unnecessary light. Further, Applicant places no criticality on the range claimed, indicating that “the diaphragm coating 23 preferably has a light reflectance value of less than 10% upwards and/or downwards” in paragraph 0038.
Regarding claim 10, Fujimori, as previously modified by Kodama, discloses the endoscopic instrument according to claim 1. Fujimori further discloses wherein the image sensor unit is configured to record an optional image provided by the objective lens (the image pickup device 50 has a light receiving surface 50SA and a rear surface 50SB opposing the light receiving surface 50SA, and includes a light receiving section 51 composed of a CCD or the like, on which an object image is formed, on the light receiving surface 50SA; Fig. 3, paragraph 0024) and make the optical image available in the form of electrical signals (the image pickup device 50 receives a driving signal and transmits an image pickup signal via a wiring connected to the external electrode 52; Fig. 3, paragraph 0024).
Regarding claim 11, Fujimori, as previously modified by Kodama, discloses the endoscopic instrument according to claim 1. Fujimori further discloses wherein at least a distal section of the shaft, that comprises the objective lens, is configured as a disposable article (the endoscope 9 is capable of being disposed; Fig. 1).
Regarding claim 12, Fujimori, as previously modified by Kodama, discloses the endoscopic instrument according to claim 1. Kodama further discloses wherein the objective lens is adhered in a fluid-tight manner to a distal opening of the imaging channel and thereby outwardly seals the imaging channel (a lens unit 30 for image pickup of the image pickup unit 25 that is mounted on the mounting surface 94 is inserted into the image pickup unit holding hole 105, and then is sealed by an adhesive agent or the like; Fig. 19-20; paragraph 0137).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent Appl. Publ. No. 2021/0099620 A1 to Igarashi teaches an image pickup apparatus that is shaped as a hexagonal column as described in Fig. 18 and the following descriptive text.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVIA G STARKEY whose telephone number is (571)272-3375. The examiner can normally be reached Monday-Friday 8:00-5:00 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 5712707235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OLIVIA GRACE STARKEY/ Examiner, Art Unit 3795
/MICHAEL J CAREY/ Supervisory Patent Examiner, Art Unit 3795
Prosecution Insights