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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 and 7-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1, the limitation “wherein one end of the elevator is supported at an elevator support portion so as to be rotationally movable with respect to the distal end part main body, wherein the at least one treatment tool contact portion is a protrusion protruding from a region of a concave surface of the elevator at a part on an elevator support portion side in a case where the elevator housing space is divided into two in an axial direction of the insertion part, the region being separated from both side edges of the elevator that extend in the axial direction, or is a protrusion protruding, from a wall surface that extends in the axial direction and forms the elevator housing space with the distal end part main body, at the part on the elevator support portion side in the case where the elevator housing space is divided into two in the axial direction” is not mentioned in the specification and is considered new matter.
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.
Claims 1-4 and 7-11 are 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.
In claim 1, the limitation “wherein one end of the elevator is supported at an elevator support portion so as to be rotationally movable with respect to the distal end part main body, wherein the at least one treatment tool contact portion is a protrusion protruding from a region of a concave surface of the elevator at a part on an elevator support portion side in a case where the elevator housing space is divided into two in an axial direction of the insertion part, the region being separated from both side edges of the elevator that extend in the axial direction, or is a protrusion protruding, from a wall surface that extends in the axial direction and forms the elevator housing space with the distal end part main body, at the part on the elevator support portion side in the case where the elevator housing space is divided into two in the axial direction” renders the claim indefinite.
The language “in the case” renders the claim indefinite, the scope and bounds of the claim are unclear. The structural features of the endoscope are unclear. It is unclear whether or not “the elevator housing space is divided in two in an axial direction of the insertion part, the region being separated from both side edges of the elevator that extend in the axial direction”.
The limitation “forms the elevator housing space” renders the claim indefinite. It is unclear what the scope of the term “forms” would be in this context, it is unclear if this limitation is directed to a manufacturing step.
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) 1-4 and 8-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hosogoe (US 2019/0117045).
Hosogoe shows an endoscope ([0048]; Figs. 1 and 15-16) comprising: an insertion part to be inserted into a subject ([0048]-[0049], [0088]-[0091]); a distal end part main body that is located at a distal end of the insertion part, has a distal end surface provided with a treatment tool outlet port, and forms an elevator housing space communicating with the treatment tool outlet port ([0055], [0089]); a treatment tool contact portion, that is a member provided in the elevator housing space and comes into contact with a distal end of a treatment tool that has come out of the treatment tool outlet port, to control an advancing direction of the treatment tool (recess, [0089]); and an elevator that is provided in the elevator housing space and elevates the treatment tool of which the advancing direction is controlled by the treatment tool contact portion ([0088]-[0091]); wherein one end of the elevator is supported at an elevator support portion so as to be rotationally movable with respect to the distal end part main body, and the treatment tool contact portion is provided in a vicinity of the elevator support portion ([0090]); wherein the at least one treatment tool contact portion is a protrusion protruding from a region of a concave surface of the elevator at a part on an elevator support portion side in a case where the elevator housing space is divided into two in an axial direction of the insertion part, the region being separated from both side edges of the elevator that extend in the axial direction, or is a protrusion protruding, from a wall surface that extends in the axial direction and forms the elevator housing space with the distal end part main body, at the part on the elevator support portion side in the case where the elevator housing space is divided into two in the axial direction (the elevator housing space may be considered to be divided into multiple parts, for example the elevator is housed in an initial position, and is then moved into another region of the housing space; Fig. 15).
Hosogoe also shows wherein the treatment tool contact portion is provided in a half region of the elevator on a side of the elevator support portion in a longitudinal direction (Figs. 3 and 15-16); a cap that is attached to the distal end part main body and covers at least a part of the elevator housing space, wherein the treatment tool contact portion is provided on the cap ([0050], [0094]); wherein the treatment tool contact portion is provided on the distal end part main body (Figs. 15-16); wherein the treatment tool contact portion is a protrusion (treatment tool contact portion rotates to protrude, and therefore may be considered a protrusion as illustrated in Fig. 16); wherein a plurality of the treatment tool contact portions are provided ([0106]-[0107]); wherein the elevator includes a distal end part protrusion in a half region opposite to a side of the elevator support portion in a longitudinal direction (Figs. 3 and 15-16); wherein the treatment tool contact portion controls the advancing direction of the treatment tool to a direction of the distal end part protrusion in a case where the elevator is in a reclined position, and the elevator includes the distal end part protrusion at a position where the treatment tool comes into contact in a case where the elevator is elevated to an elevated position ([0056]); a part or all of the endoscope is disposable ([0094]).
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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hosogoe (US 2019/0117045).
Hosogoe shows the invention substantially as described in the 102 rejection above.
Hosogoe fails to show wherein the treatment tool contact portion has a triangular prism shape.
However, Hosogoe teaches that the treatment tool contact portion may have a shape that is contoured to the profile of the treatment tool, and Hosogoe teaches that multiple caps having treatment tool contact portions of different shapes may be provided ([0107]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified the treatment tool contact portion of Hosogoe to have a triangular prism shape as an obvious design choice, as Hosogoe teaches that the treatment tool contact portion may have a shape contoured to the profile of the treatment tool and that a variety of different shapes may be utilized for the treatment tool contact portion, in order to prevent the treatment tool from swaying to the left and right at elevation ([0107]). Furthermore, it has been held that a change in shape is generally recognized as being within the level of one of ordinary skill in the art (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)).
Response to Arguments
Applicant's arguments filed 10/9/25 have been fully considered but they are not persuasive.
In response to applicant’s arguments that Hosogoe fails to teach that the elevator is a protrusion, examiner respectfully disagrees. The elevator of Hosogoe is considered a protrusion as illustrated in Figures 15-16. While applicant argues that the elevator is a “recess”, the examiner notes that the walls of the recess form a protrusion. The elevator also extends away from the walls of the device, and may further be considered a protrusion.
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 JONATHAN CWERN whose telephone number is (571)270-1560. The examiner can normally be reached Monday - Friday, 8:00 am - 5:00 pm.
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, Christopher Koharski can be reached at (571) 272-7230. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN CWERN/Primary Examiner, Art Unit 3797