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 .
Claims 9-16 have been examined.
Election/Restrictions
Claims 1-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group I, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/4/2025.
It is noted that the applicants in their response only stated that the election was with traverse and that there would be no undue burden on the examiner to examine all claims.
This is strongly disagreed by the Examiner as there would be a serious search and examination burden if the restriction was not required between the method and apparatus/product claims. This stems from the different examination criteria between method and apparatus/product claims. In this case, apparatus claims differentiate from method claims, since for apparatus/product claims, it is primarily the claimed structural features that are given patentable weight while other features such as material worked upon by the apparatus are not given patentable weight. This difference would extend into a search burden since process claims take into account features such as material worked upon, process of making, or operating procedures, which may have different classification classes/subclasses for consideration and different search queries. See MPEP 808.02(C).
Meanwhile, the apparatus/product claims would extend to different areas of consideration since the material worked upon would not limit prior art references since the references merely need to have a similar structure that is capable of working upon the materials whereas the same said references might not be considered as prior art for the process claims.
Although there may be some overlap of the search for the inventions there is nothing to indicate that the search would be coextensive. Thus, the examination on the merits of apparatus claims differs from that of method claims. Therefore, the extra search and/or examination burden for addressing multiple inventions poses a serious burden to the examiner which makes the restriction requirement proper.
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.
Claim(s) 9-11 and 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHENG (US 2022/0265122 A1) in view of SUGIYAMA (US 2019/0315027 A), HEDEMANN (US 2022/0330798 A1), and KATO (US 2013/0309341 A1).
Re: 9. A method for fabricating an endoscopic source-imaging module, comprising steps:
fixing an image sensor 11, 32 onto the front surface and electrically connecting the image sensor;
disposing an illumination module 12, 33 on the front surface and electrically connecting the illumination module; and
disposing a single-use mold 20 on the front surface, wherein the single-use mold respectively accommodating the image sensor and the illumination module;
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Wherein the CHENG reference teaches of the use of a mold and additional encapsulant 38 that surround the formed encapsulant 37 and elements, see Fig. 5. It is noted that the concept of a single use mold that additional forms part of the formed product is known in the molding arts with other terms used for the particular structure including preform, insert, or core.
CHENG does teach of molding of resin over just the illumination module, see Fig. 5, along with teaching of the placement of a carrier within a mold for molding is also taught in Fig. 5. Here, the respective modules in the respective routes are noted, and in which the routes are not taught by CHENG. Here, the teaching of CHENG does teach of a particular encapsulating/molding around one particular element.
CHENG does not teach of the method of using a single use mold, providing the through holes and the metal routes, and of the substrate, which includes a front surface, a rear surface, a first metal route, and a second metal route, wherein the first route and the second route extend from the front surface to the rear surface; and
the single-use mold also includes a runner interconnecting the first through-hole and the second through-hole.
Regarding the single use mold, see in HEDEMANN, see Figs. 9-11, regarding the molding with the use of the housing/shaft tube 20 which can also be seen as part of the mold for which the resin 54 is supplied into and formed as part of the product, see also the positioning of the extension 30 and of the assembly 40 that is positioned to be covered by the plastic, and wherein the assembly being the light source 44 and sensor (camera) 42. The housing within shaft tube 20 Wherein, this concept of the housing being a portion of what shapes the resin and also seen as the through hole within for positioning and encapsulating the modules. As seen in Fig. 11, the shaft tube 20 is removed as part of the formed product whereby being a ‘single use’ mold.
It would have been obvious for one of ordinary skill in the art to have modified the molding process of CHENG with the use of a single use mold as taught by HEDEMANN in which case of a housing that is provided that is part of the final formed product for which molding can be conducted as it allows for the formation of the device with the features provided being mechanically permanently and robustly connected, see [0003].
Regarding the through holes and metal routes, see SUGIYAMA that also teaches of the concept of single use mold , which is via the rotor core with magnets arranged and includes resin flowing through to form the final product that includes the ‘mold’. Here, the SUGIYAMA reference, see Fig. 2, teaches of the core body 11 (which corresponds to the claimed single use mold) being held in place with the stationary mold (which can be interpreted as the claimed substrate) and wherein housing holes 13 (which matches the claimed through holes) that run through the core and wherein resin flows through the holes, see resin 15 which is an epoxy resin, see [0033]. The formed product would then be in Fig. 1A, 1B. See the respective housing holes 13 that have been filled with resin 15, see Fig. 1A. As seen in Fig 2, the holes run from the front to the rear surface of the core (mold). Additionally, SUGIYAMA teaches of formed cooling holes 11c, and in which they have communicating portion that branches inside the core body and communicates with the center hole 1A, see [0034]. Which teaches the concept of interconnected passages within the core. Further, the mold of SUGIYAMA that forms part of the structure of the final product would correspond to the encapsulant 38 of CHENG that provides in forming a structure in the final formed product.
It would have been obvious for one of ordinary skill in the art to have modify the mold of CHENG with single use mold concept and additional use of through holes and routes arrangement as taught by SUGIYAMA allowing for injection at different locations of the design of the endoscopic module at the different elements.
Regarding the formation of runners between the through holes, the concept of the KATO reference teaches of the runner between the through holes, see holes 33, and see molten resin 3434, see Fig. 4, see the through holes being interconnected between the outlets 22.
It would have been obvious for one of ordinary skill in the art to have further modify the mold of the modified CHENG with the runners interconnected between the through holes as taught by KATO as a known arrangement of the flow of a molten resin within a single use mold, as this can be seen under KSR rationale, see MPEP 2143, as combining prior art elements according to known methods to yield predictable results.
Re: 10 (upon 9), wherein the step of disposing the illumination module on the front surface further includes steps:
fixing a carrier onto the front surface, and electrically connecting the carrier with the second metal route; and
fixing a light source onto the carrier to form the illumination module, wherein the light source is electrically connected with the second metal route through the carrier.
CHENG does teach of molding of resin over just the illumination module, see Fig. 5, along with teaching of the placement of a carrier within a mold for molding is also taught in Fig. 5. Here, the respective modules in the respective routes are noted, and in which the routes are not taught by CHENG. Here, the teaching of CHENG does teach of a particular encapsulating/molding around one particular element. In the, the teaching of SUGIYAMA of the plurality of through holes, and wherein, the placement of an element to a particular through hole is noted for a particular molding portion can be construed particularly with the teaching by CHENG. Wherein the carrier of CHENG electrically connects from the carrier to the light source and the wherein the combination of CHENG in view of SUGIYAMA teaches of this arrangement.
Re: 11 (upon 9), wherein the single-use mold further includes a working channel region for sleeving a working channel.
See 16 for CHENG that can be a working channel.
Re: 13 (upon 9), wherein a height of the image sensor is larger than a height of the illumination module.
See teaching by CHENG, see elements 11, 12 in comparison, see Fig. 1.
Re: 14 (upon 13), further comprising steps: filling a resin from the first through-hole or the second through hole; and curing the resin.
See in CHENG of filling of encapsulant, and curing, see [0003, 0031].
Re: 15 (upon 14), wherein the resin is a transparent resin, and a height of the resin is not larger than the height of the image sensor.
Re: 16 (upon 14), wherein the resin is an opaque resin or a semi-transparent resin, and a height of the resin is not larger than the height of the illumination module.
Re: 15 and 16, see teaching by CHENG [0029] of the semi-transparent or opaque resin for the first encapsulant 34, while encapsulant 38 is highly transparent resin.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified CHENG as applied to claim 9 above, and further in view of KUHN (US 2019/0246027 A1).
Re: 12 (upon 9), wherein sidewalls of the second through-hole have reflective films.
CHENG does not teach of reflective films on the through hole.
See teaching by KUHN concerning reflective coating, see [0019-0022], and includes reflective sleeve which can be encompass the claimed reflective film in the sidewall of the through-hole, as it allows for optimized output of the light along the sleeve.
It would have been obvious for one of ordinary skill in the art to have modify the through hole of the modified CHENG having the reflective films in the through hole as taught by KUHN as it allows for optimized output of the light along the through hole with the illumination module.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892 form, of particular note:
OTSUKA (US 2020/0047383 A1) teaches of overmolding within a die.
HAYAKAWA (US 2020/0008658 A1) teaches of molding, see Fig. 12 of endoscope.
YAMADA (US 2023/0007769 A1) teaches of resin 86 placed into cavity 55 of the electronic module 50, see [0033], see fig. 1 and 2. Whereby, the module itself is a ‘single use’ mold.
PETERSON (WO 2010/066790 A1) similar teaching with the CHENG teaching above in endoscope making that includes molding.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMMANUEL S LUK whose telephone number is (571)272-1134. The examiner can normally be reached Monday-Friday 9 to 5.
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, Xiao S Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMMANUEL S LUK/Primary Examiner, Art Unit 1744