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 III in the reply filed on January 26, 2026 is acknowledged. The traversal is on the ground(s) that Ishizeki fails to disclose the use of multiple light pulses during a single video frame to separately illuminate matching vocal chord displacement phases as recited in amended claim 1. This is not found persuasive because, as pointed out in the Lack of Unity Action, and further pointed out below, Ishizeki does indeed disclose the use of multiple light pulses during a single video frame to separately illuminate matching vocal chord displacement phases as recited in amended claim 1. For example,during one frame, e.g. F1 in Fig.4, illumination light is intermittently emitted in multiple emission timings, [0049], at identical phases PE1 of multiple contiguous displacement cycles, [0051], as shown in Fig.4.
The requirement is still deemed proper and is therefore made FINAL. Group III covers claims 1 and 11-18.
Applicant's election with traverse of Species II in the reply filed on January 26, 2026 is acknowledged. The traversal is based on the sane traversal of the Restriction Requirement mentioned above. This is not found persuasive for the same reasons as set forth above.
The requirement is still deemed proper and is therefore made FINAL. Species II covers claims 11-13 and 15, claims 1-10, 15, 19 and 20 being generic.
Given election of Group III, claims 1 and 11-18 and Species II, claims 1, 11-13 and 15, claims 2-10, 14, and 16-20 are withdrawn from further consideration as being drawn to nonelected Groups/Species.
Claim Objections
Claim 1 is objected to because of the following informalities: as to claim 1, line 10, “operative coupled” should be “operatively coupled”. Appropriate correction is required.
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 limitation(s) is/are:
“video device” in at least claim 1;
“light transmission assembly” in at least claim 1
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 § 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishizeki et al. (US 2020/0345222, hereinafter “Ishizeki”).
As to claim 1, Ishizeki discloses a stroboscopic endoscope system, comprising:
an endoscope (endoscope 2, Fig.1) comprising a light guide (illumination fiber 214, Fig.2);
a video device (imaging unit 24, Fig.2) configured for imaging vocal chords of a patient that are illuminated via the endoscope ([0029]-[0031]);
a first light source (light source 51, Fig.2);
a light transmission assembly (connector 233) configured to transmit light generated by the first light source into the light guide ([0022]);
a microphone (voice input device 3, Fig.2) configured to generate a microphone output signal in response to vocalization of the patient ([0024]); and
a controller (control unit 407,408,409, Fig.2) operative coupled with the first light source, the video device, and the microphone (note coupling of all components in Fig.2, [0034]); wherein the controller is configured to process the microphone output signal to track a fundamental phonation frequency of the patient (vocal cord frequency, [0041]), wherein the controller is configured to energize the first light source to generate a sequence of two or more light flashes in synchronization with the fundamental phonation frequency during a first video frame of the video device during which the vocal chords complete at least two complete contiguous vocal chord displacement cycles so that the sequence of two or more light flashes separately illuminate matching phases of the at least two complete contiguous vocal chord displacement cycles during the first video frame (during one frame, e.g. F1 in Fig.4, illumination light is intermittently emitted in multiple emission timings, [0049], at identical phases PE1 of multiple contiguous displacement cycles, [0051], Fig.4).
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) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishizeki et al. (US 2020/0345222, hereinafter “Ishizeki”) in view of Onobori (US 2019/0254510).
As to claims 11, Ishizeki, as set forth above with respect to claim 1, fails to disclose the particulars of light source, and specifically fails to disclose that the light source includes a hemispherical reflector configured to redirect light generated by the first light source into the light transmission assembly for transmission into the light guide. Onobori discloses a light source for an endoscope that includes a hemispherical reflector (e.g. Fig.5, LED 31 with hemispherical reflector 40,41, [0062]-[0063]) configured to redirect light generated by the first light source into the light transmission assembly for transmission into the light guide (redirected through opening 42, [0064], for eventual transmission into a light guide 11, Fig.1). Onobori teaches that such light source structure, i.e. hemispherical reflector, improves light use efficiency of the LED light source ([0064]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the hemispherical reflector in the light source of Ishizeki for the reasons taught by Onobori, e.g. improvement of light use efficiency.
As to claim 12, further comprising an image processor (Ishizeki: image processor 403, Fig.2) configured to perform color balancing of images captured via the endoscope (image processor performs white balance adjustment and a color reproduction process, [0037], both forms of color balancing of images) to compensate for a first shift in spectrum induced by the hemispherical reflector (the color balancing process would be inherently capable of compensating for any shift from nominal balance, no matter what causes the deviation (shift)).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishizeki et al. (US 2020/0345222, hereinafter “Ishizeki”) in view of Onobori (US 2019/0254510), and further in view of Choi et al. (US 2007/0159064, hereinafter “Choi”).
As to claim 13, Ishizeki, as set forth above with respect to claim 12, discloses use of a “white LED” for emitting a sequence of light flashes (pulsed), but fails to disclose the nature of the white LED, including that the LED includes a phosphor that emits white light. It is known in the LED art that a “white LED” can be configured as a blue (monochromatic light) LED with a ceramic phosphor layer on the light exiting surface (Choi: [0005], as an alternative to a combination of blue, green and red LEDs, [0008]). Since Ishizeki does not disclose the particulars of the white LED, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have use any configuration for a white LED known to be suitable for providing the predictable result of emitting white light, including one in which a monochromatic LED is combined with phosphor, as taught by Choi.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishizeki et al. (US 2020/0345222, hereinafter “Ishizeki”) in view of Choi et al. (US 2007/0159064, hereinafter “Choi”).
As to claim 15, Ishizeki, as set forth above with respect to claim 1, discloses use of a “white LED” as the first light source for emitting a sequence of light flashes (pulsed) to the light guide, but fails to disclose the nature of the first light source, including that the white LED includes a monochromatic LED with a ceramic phosphor that emits white light. It is known in the LED art that a “white LED” can be configured as a blue (monochromatic light) LED with a ceramic phosphor layer on the light exiting surface (Choi: [0005], as an alternative to a combination of blue, green and red LEDs, [0008]). Since Ishizeki does not disclose the particulars of the white LED of the light source, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have use any configuration for a white LED known to be suitable for providing the predictable result of emitting white light, including one in which a monochromatic LED is combined with a ceramic phosphor, as taught by Choi.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1, 11-13 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-10 and 12 of U.S. Patent No. 12,121,224. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that each and every element of application claim 1 is covered by patent claim 1, except for specifying that the vocal chord displacement cycles are “contiguous”. However, if not inherently implied by the fact that, at a minimum sequencing covered by the claim, a sequence of two flashes during two complete displacement cycles to illuminate matching segments/phases of the cycles during one image frame would require the displacement cycles to be “contiguous”, one of ordinary skill in the art would obviously consider the cycles to be contiguous since this is one two limited universe of potential options for such sequencing: the cycles would have to either be contiguous or not contiguous. Where there is a limited universe of potential options, the selection of any particular option would have been obvious to one of ordinary skill in the art. In re Jones, 412 F.2d 241, 162 USPQ 224 (CCPA 1969). Therefore, if not implicit, application claim 1 would be obvious to one of ordinary skill in the art in view of patent claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See reference cited on PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN P LEUBECKER whose telephone number is (571)272-4769. The examiner can normally be reached Generally, M-F, 5:30-2:00.
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/JOHN P LEUBECKER/Primary Examiner, Art Unit 3795