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 .
Response to Amendment
Claim 24 has an incorrect status identifier (see 37 C.F.R. 1.121(c)(1) and MPEP § 714(II)(C)(A)). Given that Claim 24 was amended with the claim set filed July 14, 2026, the status identifier of Claim 24 should read “Currently Amended” rather than “Previously Presented”. Appropriate correction is required.
Disposition of Claims
Claims 1-3, 8-18, 20-24 & 47 are pending and rejected.
Claims 4-7, 19, 25-46 & 48-50 are canceled.
Response to Arguments
Applicant’s arguments, see Page 7, filed July 14, 2026, with respect to the objections to Claims 1 & 24 have been fully considered and are persuasive in light of amendments to the claims.
The objections to Claims 1 & 24 have been withdrawn.
Applicant’s arguments, see Pages 7-9, filed July 14, 2026, with respect to the invocation of 35 U.S.C. § 112(f) have been fully considered and are not persuasive.
In response to Applicant’s arguments that a “focusing component” i) is not a nonce term, ii) denotes a structural genus, and iii) is structurally defined in dependent claims and thus would be improper to invoke 35 U.S.C. § 112(f), Examiner respectfully disagrees.
For 35 U.S.C. § 112(f), the limitation must meet the following 3-prong analysis:
The claim uses “means or “step” or a generic placeholder (i.e., nonce term);
The generic placeholder is modified by functional language such as “configured to”; and
The generic placeholder is not modified by sufficient structure, material, or acts for preforming the claimed function.
Applicant argues that the “focusing component” is not a nonce word. The entire term “focusing component [emphasis added]” is not the nonce word. Instead, “component” is the nonce word (i.e., Prong A) and “focusing” is the modifier (i.e., Prong C). As such, the MPEP explicitly lists “component” as a nonce term (see MPEP § 2181(I)(A)) and thereby Prong A is satisfied.
Applicant argues that “focusing” denotes a structural genus “the same way lens or grating does”. For “focusing” to be sufficient structure, the modifier must “denote the type of structural device” (see MPEP § 2181(I)(C)). With lens or grating, a person of ordinary skill would know the structural aspects required to be considered a lens (i.e., a curved transparent structure) and grating (i.e., a periodic structure). With focusing, however, there are several structurally unique devices that can focus light (e.g., mirrors, prisms, pinholes). As such, focusing does not provide sufficient structure and thereby Prong C is satisfied.
Applicant argues that since the focusing component is defined in Claims 14-15 & 17, it would be inconsistent to invoke 112(f) in the independent claim. This practice would be inconsistent with proper invocation of 112(f) which requires that “each claim must be independently reviewed to determine the applicability of 35 U.S.C. 112(f)” (see MPEP § 2181(I)(C)).
Therefore, 35 U.S.C. § 112(f) is still invoked for “a focusing component/structure” in Claims 1 & 24, as detailed in the previous office action.
Applicant’s arguments, see Page 9, filed July 14, 2026, with respect to the rejections under 35 U.S.C. § 112(b) of Claims 22-23 have been fully considered and are persuasive in light of amendments to the claims.
The rejections under 35 U.S.C. § 112(b) of Claims 22-23 have been withdrawn.
Applicant’s arguments, see Pages 9-13, filed July 14, 2026, with respect to the rejections under 35 U.S.C. §§ 102 & 103 of Claims 1-3, 8-18, 20-24 & 47 have been fully considered and are persuasive.
Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made in view of Nagao et al. (hereinafter "Nagao") (US 2016/0265747), Hu et al. (hereinafter "Hu") (US 2018/0140172) and Paquet et al. (hereinafter "Paquet") (US 2020/0150347).
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.
Claim 9 is 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 9, Claim 9 recites the limitation “wherein the optical components in the optical routing structure are flat optical components” on Lines 1-2. The metes and bounds of this limitation are indefinite because, as previously recited, the optical routing structure only has one optical component —a flat optical component supported by the substrate (see Lines 10-11 of Claim 1) and thus it is unclear if the optical routing structure further comprises additional optical components. For the purpose of examination, “wherein the optical components in the optical routing structure are flat optical components” is being interpreted as “wherein all components in the optical routing structure are flat optical components”.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 8-17, 21-24 & 47 are rejected under 35 U.S.C. 103 as being unpatentable over Nagao et al. (hereinafter "Nagao") (US 2016/0265747) in view of Hu et al. (hereinafter "Hu") (US 2018/0140172).
Regarding Claim 1, Nagao discloses an endoscope system (Fig. 47, 505; [0459]) comprising:
an insertion tube (Fig. 47, 510; [0460]) having a distal tip (Fig. 47, 510a; [0460]);
an optical fiber running along the insertion tube (Fig. 47, 585; [0466]); and
an optical system (Figs. 47 & 17B, 310 wherein 310 is 100; [0451] & [0465]) located at the distal tip (see Fig. 48) and receiving light from the optical fiber ([0466]), the optical system comprising:
a substrate (Fig. 17B, 140; [0366]) having a flat surface (see Fig. 17B);
an input aperture (Figs. 17B & 48, a back face of 140; [0466]) configured to receive the light from the optical fiber ([0466]);
an optical routing structure (Fig. 17B, a meta-lens (i.e., a lens with micro-periodic structures) formed by 110 and 120; [0366]) comprising a flat optical component (110 and 120 of the meta-lens are both substantially flat (i.e., not curved); see Fig. 17B) supported by the flat surface of the substrate (see Fig. 17B); and
a focusing component (the meta-lens —see Applicant’s Claim 2 wherein the meta-lens is both the focusing component and the flat optical component of the optical routing structure; [0366]), and
wherein the optical routing structure routes light from the input to the focusing component ([0409] & [0410]).
Nagao fails to explicitly disclose the received light propagating along an axial direction of the substrate; wherein the optical routing structure redirects the light from the axial direction to a transverse direction; and the focusing component focuses the routed light to a focal spot located to a side of the optical system.
However, Hu teaches an optical system (Fig. 1A, 100; [0041]), comprising:
a substrate (Fig. 1A, a body of 100; [0041]);
an input aperture (Fig. 1A, 150; [0042]) configured to receive light (Figs. 1A, 101; [0042]), the received light propagating along an axial direction of the substrate ([0042]);
an optical routing structure (Figs. 1A & 8B, a tapered region 115/812; [0041] & [0069]); and
a focusing component (Fig. 8B, 822; [0069]),
wherein the optical routing structure redirects the light from the axial direction to a transverse direction (Fig. 8B, 82 of 101 is redirected by the tapered region from an axial direction to a transverse direction; [0069]), and
the focusing component focuses the routed light to a focal spot located to a side of the optical system ([0069]).
The advantage of redirecting and focusing the light transversely is to permit direct in-vivo imaging of delicate tissues (Hu; [0037]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the optical system as disclosed by Nagao, to include redirecting and focusing the light transversely as taught by Hu, to permit direct in-vivo imaging of delicate tissues (Hu; [0037]).
Regarding Claim 2, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein the optical system further comprises:
a lens selected from a group consisting of a photonic integrated circuit PIC lens, a diffractive lens and a meta-lens (Fig. 17B, the meta-lens is formed by 110 and 120; [0366]), wherein the lens is supported by the flat surface of the substrate (see Fig. 17B), and the lens functions as both the focusing component and as the flat optical component of the optical routing structure ([0366]).
Regarding Claim 3, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein the optical routing structure comprises:
a first grating selected from a group consisting of a PIC grating, a surface relief grating and a meta-grating ([0317]), the first grating supported by the flat surface of the substrate (see Fig. 17B); and
a second grating supported by the substrate ([0319]);
wherein the first grating redirects the light from the axial direction to an oblique direction through the substrate to the second grating, and the second grating redirects the light from the oblique direction to the transverse direction ([0317] – [0319]).
Regarding Claim 8, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein the light travels by total internal reflection through the substrate ([0336]).
Regarding Claim 9, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein the optical components in the optical routing structure are flat optical components (110 and 120 of the meta-lens are both substantially flat (i.e., not curved); see Fig. 17B).
Regarding Claim 10, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein the optical routing structure does not contain a prism or turning mirror (Fig. 17B, neither 110 nor 120 of the meta-lens are a prism or turning mirror; [0366]).
Regarding Claim 11, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein, within the optical routing structure, the light is redirected only by PIC, diffractive and/or meta optical components (Fig. 17B, the meta-lens is formed by 110 and 120; [0366]).
Regarding Claim 12, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein a maximum transverse dimension of the optical system does not exceed 3 mm ([0379]).
Regarding Claim 13, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein the flat optical component has a thickness of not more than 200 µm ([0379]).
Regarding Claim 14, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein the focusing component comprises a flat diffractive lens (Fig. 17B, 120 of meta-lens diffracts; [0315]).
Regarding Claim 15, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein the focusing component comprises a refractive lens ([0358]).
Regarding Claim 16, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses (Fig. 17B, 120 of the meta-lens refracts light and refracted light has a focal point; [0358]).
Regarding Claim 17, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 16. Nagao further discloses wherein the focusing component is selected from a group consisting of a polarization dependent lens (Fig. 17B, 120 of the meta-lens polarizes; [0358]), a dispersion engineered tens, and an axicon.
Regarding Claim 21, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein the light has a wavelength in a range of 800-1500 nm (Fig. 17B, the light is infrared light; [0305]).
Regarding Claim 22, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein the optical system further comprises a vertical stack of at least two additional flat optical components wherein the light propagates out of the substrate through the vertical stack to the focal spot (110 and 120 of the meta-lens are both substantially flat (i.e., not curved); see Fig. 17B).
Regarding Claim 23, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 23. Nagao further discloses wherein the vertical stack includes at least two of: a color filter, a partial reflector (Fig. 17B, 110 of the meta-lens reflects; [0369]), a waveplate, a polarizer (Fig. 17B, 120 of the meta-lens polarizes; [0358]), a hologram, a thin-film, and a liquid crystal layer.
Regarding Claim 24, Nagao discloses an endoscope system (Fig. 47, 505; [0459]) comprising:
an insertion tube (Fig. 47, 510; [0460]) having a distal tip (Fig. 47, 510a; [0460]);
an optical fiber running along the insertion tube (Fig. 47, 585; [0466]); and
an optical system (Figs. 47 & 17B, 310 wherein 310 is 100; [0451] & [0465]) located at the distal tip (see Fig. 48) and receiving light from the optical fiber ([0466]), the optical system comprising:
a substrate (Fig. 33, 140; [0366]) having at least one flat surface (see Fig. 33);
an input aperture (Figs. 33 & 48, a back face of 140; [0466]) configured to receive the light from the optical fiber ([0466]);
an optical routing structure (Fig. 33, a meta-lens (i.e., a lens with micro-periodic structures) formed by 110, 120r, 120g, 120b; [0410]) comprising at least one flat optical component (110, 120r, 120g and 120b are substantially flat (i.e., not curved); see Fig. 33) supported by the flat surface of the substrate (see Fig. 33);
a focusing structure (the meta-lens —see Applicant’s Claim 2 wherein the meta-lens is both the focusing component and the flat optical component of the optical routing structure; [0410]) comprising at least one focusing component (Fig. 33, 120r, 120g, and 120b; [0410]); and
at least two separated exit windows (Fig. 33, a first 130 of R1, a second 130 of R2 and a third 130 of R3; [0410]).
Nagao fails to explicitly disclose the received light propagating along an axial direction of the substrate; wherein the optical routing structure routes light from the input aperture to each of the exit windows and also redirects the light from the axial direction to transverse directions, and the focusing structure focuses the routed light to focal spots corresponding to the exit windows, and the focal spots are located to a side of the optical system.
However, Hu teaches an optical system (Fig. 1A, 100; [0041]), comprising:
a substrate (Fig. 1A, a body of 100; [0041]);
an input aperture (Fig. 1A, 150; [0042]) configured to receive light (Figs. 1A, 101; [0042]), the received light propagating along an axial direction of the substrate ([0042]);
an optical routing structure (Figs. 1A & 8B, a tapered region 115/812; [0041] & [0069]); and
a focusing component (Fig. 8B, 822; [0069]),
wherein the optical routing structure redirects the light from the axial direction to a transverse direction (Fig. 8B, 82 of 101 is redirected by the tapered region from an axial direction to a transverse direction; [0069]), and
the focusing component focuses the routed light to a focal spot located to a side of the optical system ([0069]).
The advantage of redirecting and focusing the light transversely is to permit direct in-vivo imaging of delicate tissues (Hu; [0037]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the optical system as disclosed by Nagao, to include redirecting and focusing the light transversely as taught by Hu, to permit direct in-vivo imaging of delicate tissues (Hu; [0037]).
Regarding Claim 47, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein the optical system is integrated with a biopsy needle (Fig. 49, 594; [0471]).
Claims 18 & 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nagao et al. (hereinafter "Nagao") (US 2016/0265747) in view of Hu et al. (hereinafter "Hu") (US 2018/0140172) as applied to Claim 1 above, and further in view of Paquet et al. (hereinafter "Paquet") (US 2020/0150347).
Regarding Claims 18 & 20, Nagao, as previously modified by Hu, teaches the endoscope system of Claim 1. Nagao further discloses wherein the optical system further comprises:
a slab waveguide supported by the substrate (Fig. 30, 110s; [0327]), and
wherein the light from the optical fiber is coupled through the input aperture into the slab waveguide ([0327]).
Nagao, as previously modified by Hu, fails to explicitly disclose wherein the slab waveguide includes a tapered section for mode matching between the optical fiber and the slab waveguide; and wherein the slab waveguide is a silicon on insulator SOI waveguide.
However, Paquet teaches an endoscope system (Fig. 24A, 210; [0110]) comprising:
an insertion tube having a distal tip (see Fig. 24A):
an optical fiber running along the insertion tube (Figs. 1A & 24A, 100; [0059]); and
an optical system (Fig. 1A, 102; [0059]), comprising:
a substrate (Fig. 1A, 104; [0060]) having a flat surface (see Fig. 1A);
an input aperture (Figs. 1A & 1B, 130; [0067]) configured to receive the light from the optical fiber ([0067]); and
a slab waveguide (Fig. 1A, 132; [0069]) supported by the substrate (see Fig. 1A), wherein the light from the optical fiber is coupled through the input aperture into the slab waveguide ([0069]);
wherein the slab waveguide includes a tapered section (132 tapers; see Fig. 1A) for mode matching between the optical fiber and the slab waveguide ([0074]); and
wherein the slab waveguide is a silicon on insulator SOI waveguide ([0060]).
The advantage of the slab waveguide is to improve coupling efficiency between the optical fiber and the substrate (Paquet; [0075]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the optical system as disclosed by Nagao, as previously modified by Hu, with to include the slab waveguide as taught by Paquet, to improve coupling efficiency between the optical fiber and the substrate (Paquet; [0075]).
Conclusion
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/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795
