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 of Invention I, readable on claims 1-11 in the reply filed on 11/04/2025 is acknowledged.
Status of Claims
Claims 1-18 are pending, claims 12-18 are withdrawn and claims 1-11 are currently under consideration for patentability under 37 CFR 1.104.
Foreign Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copies have been received.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/06/2023 been considered by the examiner.
Claim Rejections - 35 USC § 102
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 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 JP2006288432A to Kumei.
Regarding claim 1, Kumei discloses an endoscope comprising: an illumination optical system ([0012]) that transmits illumination light ([0012]) from a light source (3, Fig. 1, [0011]) via a light guide (14, Fig. 1, [0012]) to a distal end portion (11, Fig. 1, [0012]) of an insertion part (7, Fig. 1, [0012]) to irradiate an observation site from the distal end portion with the illumination light ([0012]), wherein the illumination optical system includes: a first lens located on a distal end side of the light guide (17b, Fig. 1, [0017]); and a second lens disposed on a distal end side of the first lens while holding a constant distance interval (17a, Fig. 1, [0017]) and wherein an outer diameter of the second lens is larger than an outer diameter of the first lens (Fig. 2) and is 2.1 mm or more and 3.0 mm or less ([0023]).
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.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2006288432A to Kumei.
Regarding claim 2, Kumei discloses the endoscope according to claim 1.
Kumei fails to expressly teach wherein the outer diameter of the second lens is equal to or more than 1.4 times the outer diameter of the first lens.
However, the Examiner is of the position that it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the present invention to have modified the outer diameter of the second lens of the device of Kumei to be equal to or more than 1.4 times the outer diameter of the first lens, since such a modification would have involved a mere change in the size of a component (the lens) and since paragraph [0017] of Kumei expressly teaches that the second lens is larger than the first lens. A change in size is generally recognized as being within the level of ordinary skill in the art (MPEP 2144.04(IV)(A)).
Regarding claim 3, Kumei teaches the endoscope according to claim 2, and Kumei further discloses wherein the first lens is a convex lens ([0017]).
Regarding claim 4, Kumei teaches the endoscope according to claim 3, and Kumei further disclsoes wherein the first lens is a biconvex lens ([0017]).
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2006288432A to Kumei and further in view of U.S. Publication No. 2010/0245653 to Bodor et al. (hereinafter “Bodor”).
Regarding claim 5, Kumei teaches the endoscope according to the endoscope according to claim 4.
Kumei fails to expressly teach wherein the second lens is a convex lens.
However, Bodor teaches of an endoscope (Bodor: [0020]) wherein the second lens is a convex lens (Bodor: Fig. 1, [0020], Claim 7).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the second lens of Kumei, to utilize a convex lens in the manner taught by Bodor. It would have been advantageous to make the combination for the purpose of projecting a field ([0020] of Bodor).
Regarding claim 6, Kumei, in view of Bodor, teaches the endoscope according to claim 5.
Kumei, in view of Bodor, fails to expressly teach wherein the second lens is a convex-plane lens having a convex shape on a light incidence end side and a planar shape on a light emission end side.
However, Bodor further teaches wherein the second lens is a convex-plane lens having a convex shape on a light incidence end side and a planar shape on a light emission end side (Bodor: Fig. 1, [0020], Claim 7).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the second lens of Kumei, in view of Bodor, to utilize a convex-plane lens in the manner taught by Bodor. It would have been advantageous to make the combination for the purpose of projecting a field ([0020] of Bodor).
Regarding claim 7, Kumei, in view of Bodor, teaches the endoscope according to claim 6, and Kumei further discloses wherein in a case in which the outer diameter of the second lens is denoted by D and a curvature radius of the second lens on the light incidence end side is denoted by R, the second lens satisfies a following conditional expression: 1.48 <= D/R (Kumei: 17a, Fig. 1, [0017]).
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kumei and further in view of Bodor and U.S. Publication No. 2017/0311775 to Fujita.
Regarding claim 8, Kumei, in view of Bodor, teaches the endoscope according to claim 7.
Kumei, in view of Bodor, fails to expressly teach wherein an optical element having a light reflection function is disposed between the light guide and the first lens.
However, Fujita teaches of an endoscope (Fujita: 4, Fig. 18, [0150]) wherein an optical element having a light reflection function is disposed between the light guide and the first lens (Fujita: [0065]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Kumei, in view of Bodor, to utilize an optical element in the manner taught by Fujita. It would have been advantageous to make the combination for the purpose of reflecting light ([0065] of Fujita).
Regarding claim 9, Kumei, in view of Bodor and Fujita, teaches the endoscope according to claim 8.
Kumei, in view of Bodor and Fujita, fails to expressly teach wherein the optical element includes a light incidence end facing the light guide, an outer peripheral portion having a light reflection function, and a light emission end having a convex shape.
However, Fujita further teaches wherein the optical element includes a light incidence end facing the light guide, an outer peripheral portion having a light reflection function, and a light emission end having a convex shape ([0065] of Fujita).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Kumei, in view of Bodor and Fujita, to utilize an optical element in the manner taught by Fujita. It would have been advantageous to make the combination for the purpose of reflecting light ([0065] of Fujita).
Regarding claim 10, Kumei, in view of Bodor and Fujita, teaches the endoscope according to claim 9.
Kumei, in view of Bodor and Fujita, fails to expressly teach wherein the optical element has a total reflection function.
However, Fujita further teaches wherein the optical element has a total reflection function.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Kumei, in view of Bodor, and Fujita, to utilize an optical element in the manner taught by Fujita. It would have been advantageous to make the combination for the purpose of reflecting light ([0065] of Fujita).
Regarding claim 11, Kumei, in view of Bodor and Fujita, teaches the endoscope according to claim 10.
Kumei, in view of Bodor and Fujita, fails to expressly teach wherein the optical element is composed of a core and a clad.
However, Fujita further teaches wherein the optical element is composed of a core and a clad ([0065] of Fujita).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Kumei, in view of Bodor, and Fujita, to utilize an optical element in the manner taught by Fujita. It would have been advantageous to make the combination for the purpose of reflecting light ([0065] of Fujita).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTEN A. SHARPLESS whose telephone number is (571)272-2387. The examiner can normally be reached Monday-Tuesday 6:00 AM - 2:00 PM, and Friday 6:00 AM - 10:00 AM.
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, Mike Carey can be reached at (571) 270-7235. 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.
/C.A.S./Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
Prosecution Insights