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 .
Status of Claims
Claims 1-11 are pending, claims 10-11 have been added and claims 1-11 are currently under consideration for patentability under 37 CFR 1.104.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-9 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 Objections
Claims 9-11 are objected to because of the following informalities:
In claim 9, on line 16, change “the bending motion” to “a bending motion” (i.e., not previously recited).
In claim 10, on lines 4-5, change “a first end and a second end” to “the first end and the second end” (i.e., not previously recited).
In claim 11, on lines 5-6, change “a first end and a second end” to “the first end and the second end” (i.e., not previously recited).
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.
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 and 3-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Phoolchund (US 2019/0269471).
Regarding claim 1, Phoolchund discloses an endoscope (instrument 105, figure 1 | camera [0049]) having a connector (400, figure 4) connected to an external device (300, figure 3 | see 500, figure 5) having a power source to receive power therefrom (502-505, figure 5), the endoscope comprising: a power receiving part (403-405, figure 4 | also see in figure 15) configured to move by receiving power from the power source; and a bendable section (articulation of the instrument [0049]) configured such that a bending motion thereof in an upward-downward direction or a left-right direction (cables…[0049] | see axes in figure 3) is controlled by a movement of the power receiving part (secured…to the interface elements…[0049]) so that the bendable section bends inside a body to move along an interior of a curved tubular organ (move relative to the shaft of the instrument [0049]), wherein the power receiving part has a protrusion (see 403-405, figure 4 | see figure 15) exposed externally through a slot provided in a front cover of the connector (best seen in figures 4 and 15), the protrusion is connected to the external device to receive the power (transfers drive to the end effector…[0049]), and the power receiving part slides between a first end and a second end on a rail (slidable along a rail…[0053] | see figures 4 and 15) provided on the connector to control the bending motion of the bendable section in the upward-downward or left-right direction (transfers drive…[0049]).
Regarding claim 3, Phoolchund further discloses a controller (surgeon command interface 312, figure 3 | motion of the end effector [0050]) configured to generate a control signal (input devices…request motion of the end effector [0050]), wherein the control signal generated by the controller controls rotational force of the power source (displacement is driven by a motor and lead screw arrangement…[0058]).
Regarding claim 4, Phoolchund further discloses a controller (surgeon command interface 312, figure 3 | motion of the end effector [0050]) configured to generate a control signal (input devices…request motion of the end effector [0050]), wherein the control signal generated by the controller controls a travel distance of the power receiving part (see 403-405, figure 4 | see figure 15 | displacement is driven by a motor and lead screw arrangement…[0058]).
Regarding claim 5, Phoolchund further discloses the power receiving part comprises a first slider and a second slider (see 403-405, figure 4; Phoolchund | see figure 15), and the control signal comprises a first control signal to control a travel distance of the first slider and a second control signal to control a travel distance of the second slider (input devices…request motion of the end effector [0050] | motor and lead screw arrangement…[0058]).
Regarding claim 6, Phoolchund further discloses the power receiving part comprises a pair of power receiving parts (403-405, figure 4; Phoolchund | see figure 15), wherein one of the pair of power receiving parts controls upward and downward bending of the bendable section and the other of the pair of power receiving parts controls left and right bending of the bendable section (pairs of driving elements…[0051] | interpreted the driving elements to provide L/R and U/D bending).
Regarding claim 7, Phoolchund further discloses power generated due to the movement of the power receiving part is transmitted to the bendable section (input device…end effector [0050]; Phoolchund) through the controller (surgeon command interface 312, figure 3 | interpreted “through the controller” to mean the controller is causing the power to be generated).
Regarding claim 8, Phoolchund further discloses the power receiving part receives power directly from the external device comprising the power source therein (see figure 6 | drive assembly interface elements 502-504, figure 6; [0056]).
Regarding claim 9, Phoolchund discloses an endoscope (see figure 3 | camera [0049]) comprising: an insertion tube (105, figure 1) comprising a bendable section (articulation of the instrument [0049]) configured to be inserted into a subject's body to collect image information (camera [0049]); a controller (surgeon command interface 312, figure 3 | motion of the end effector [0050]) configured to generate a control signal for controlling a bending angle of the bendable section so that the bendable section bends inside a body to move along an interior of a curved tubular organ (input devices…request motion of the end effector [0050]); and a connector (400, figure 4 | see 400 connect to 500, figures 5-6) comprising an output part configured to output the control signal (motor…electrical cables [0050] | motor…[0058]) and a power receiving part (403-405, figure 4 | see figure 15) configured to receive external power corresponding to the control signal (motor…articulation of the end effector [0058]), wherein the control signal controls a travel distance of the power receiving part (displacement is driven by a motor and lead screw arrangement…[0058]), wherein the power receiving part has a protrusion (see 403-405, figure 4 | see figure 15) exposed externally through a slot provided in a front cover of the connector (best seen in figures 4 and 15), the protrusion receives the power (see figure 6), and the power receiving part slides between a first end and a second end on a rail (slidable along a rail…[0053] | see figures 4 and 15) provided on the connector to control the bending motion of the bendable section in the upward-downward or left-right direction (transfers drive…[0049]).
Regarding claim 10, Phoolchund further discloses the protrusion is engaged with a recess (see recess 505, figure 5) formed at a power providing part (502-505, figure 5) of the external device to receive the power, wherein the power receiving part is coupled to the rail to reciprocally slide between a first end and a second end of the rail (see figures 6-7) such that the protrusion is configured to move in a direction perpendicular to the direction in which the protrusion protrudes externally through the slot (see movement of protrusion(s) in figures 6-7) to control the bending motion of the bendable section in the upward-downward or left-right direction (cables…[0049] | see axes in figure 3), wherein a control signal (input devices…request motion of the end effector [0050]) generated by the endoscope is transmitted to the external device to control a rotational force of the power source (displacement is driven by a motor and lead screw arrangement…[0058]), and the power generated by the power source is transmitted from the external device, such that a travel distance of the power receiving part coupled with the power providing part is controlled (see 403-405, figure 4 | see figure 15 | displacement is driven by a motor and lead screw arrangement…[0058]).
Regarding claim 11, Phoolchund further discloses the connector is connected to an external device (300, figure 3 | see 500, figure 5) having a power source (502-505, figure 5), wherein the protrusion is engaged with a recess (see recess 505, figure 5) formed at a power providing part (see 502-505, figure 5) of the external device to receive the power, wherein the power receiving part is coupled to the rail to reciprocally slide between a first end and a second end of the rail (slidable along a rail…[0053] | see figures 4 and 15) such that the protrusion is configured to move in a direction perpendicular to the direction in which the protrusion protrudes externally through the slot (see movement of protrusion(s) in figures 6-7) to control the bending motion of the bendable section in the upward-downward or left-right direction (cables…[0049] | see axes in figure 3), wherein the control signal generated by the endoscope is transmitted to the external device to control a rotational force of the power source (displacement is driven by a motor and lead screw arrangement…[0058]), and the power generated by the power source is transmitted from the external device, such that a travel distance of the power receiving part coupled with the power providing part is controlled (see 403-405, figure 4 | see figure 15 | displacement is driven by a motor and lead screw arrangement…[0058]).
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.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Phoolchund (US 2019/0269471) as applied to claim 1 above, and further in view of Hwang (US 2021/0369366).
Regarding claim 2, Phoolchund further discloses the bendable section comprises an imaging means (interpreted under 35 USC 112f as a component in the endoscope to collect image information [0041] | camera [0049]) configured to be inserted into a subject's body to collect image information. Phoolchund is silent regarding an illumination means configured to illuminate an interior of the subject's body.
Hwang teaches an endoscope can have optical fibers ([0044]) for conducting light from one end to another end ([0033]).
It would have been obvious to modify the endoscope of Phoolchund to have optical fibers ([0044]) as further taught by Hwang. Doing so would provide light that is conducted from one end to another end ([0033]). The modified endoscope would have an illumination means (this element is interpreted under 35 USC 112f as a light source in the external device | optical fiber [0033] and [0044] of Hwang; interpreted there to be a light source to provide light that is conducted through the optical fiber; light from one end…[0033]) configured to illuminate an interior of the subject's body.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA F WU whose telephone number is (571)272-9851. The examiner can normally be reached M-F: 8-4 PM.
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PAMELA F. WU
Examiner
Art Unit 3795
April 29, 2026
/RYAN N HENDERSON/Primary Examiner, Art Unit 3795
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