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 .
Response to Amendment
Claims 14-32 are pending. Claim 24 has been amended. Claims 16 and 28-32 have been withdrawn. The rejection of claim 24 under 35 USC 112b is withdrawn in view of the amendment. The prior art rejection is maintained.
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.
Claim(s) 14-15 and 23-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ailinger (US 6,530,881) in view of Jensen (US 2020/0268238).
Regarding claim 14, Ailinger discloses a method for producing a working channel tube for an endoscope (col. 5 ll. 41-53), the method comprising: providing an elongated hollow tube body including an outer layer and an inner layer, the inner layer comprising an inner surface (inner surface 279 of sheath 254, inherently has an inner layer and outer layer, comprising portions facing inner and outer surface, respectively, col. 9 ll. 59 to col. 10 ll. 13, Fig. 12); inserting a mandrel having a texture or structure on an outer surface of the mandrel into the elongated hollow tube body (forming tool 276 with textured portion 277 inserted into the elongated hollow tube body as the sheath folds around forming tool 276, col. 8 ll. 62 to col. 9 ll. 13, Fig. 12); and pressing the elongated hollow tube body against the mandrel with a force sufficient to transfer the texture or structure of the mandrel onto the inner surface of the inner layer of the elongated hollow tube body (col. 8 ll. 62 to col. 9 ll. 13, Fig. 12), said pressing providing an inner friction-reducing textured or structured surface of the working channel tube (textured, pressure vessel forces sheath onto the tube, col. 8 ll. 62 to col. 9 ll. 13, col. 10, 30-34, Fig. 12).
Ailinger teaches a method substantially as claimed. Ailinger differs in two respects, the sheath is presented as being a single layer instead of an inner layer and outer layer as claimed, and the sheath is formed around the mandrel instead of being an elongated tube that is then placed around the mandrel.
However, in the same field of endeavor of producing a tube for an endoscope, [0003], Jensen teaches providing an elongated hollow tube body including an outer layer and an inner layer, the inner layer comprising an inner surface (flexible tube may have a multi-layered side wall, [0036]); inserting a mandrel having a texture or structure on an outer surface of the mandrel into the elongated hollow tube body (tube placed over mandrel 164, [0215] Fig. 16a).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Ailinger to provide a multilayer tube and insert a mandrel into the tube because [0036] of Jensen teaches that such tubes for endoscopes can be multilayered and [0215-16] teaches that inserting the mandrel within the tube is another way to place such a tube around a mandrel, with both the method of Ailinger and the method of Jensen resulting in a tube placed around a mandrel for further processing.
Regarding claim 15, Ailinger does not disclose before inserting the mandrel, extruding the elongated hollow tube body.
However, Jensen teaches before inserting the mandrel, extruding the elongated hollow tube body (extrusion to form the tube, [0196]; note that in [0216], the tube has already been made and [0196] is how Jensen teaches to produce a tube).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the method of Ailinger to, before inserting the mandrel, extruding the elongated hollow tube body because, as modified, [0216], Fig. 16a of Jensen teaches providing the tube before inserting the mandrel, and Jensen teaches producing such a tube with extrusion in [0196].
Regarding claim 23, Ailinger as modified teaches wherein said pressing reduces a contact surface of the elongated hollow tube body by at least 20% (textured interior surface reduces the contact surface, this is being done for the same reason as Applicant in a similar way and teaches at least an overlapping range, col. 10, ll. 6-13, see MPEP 2144.05(I)).
Regarding claim 24, Ailinger as modified teaches wherein an inner diameter of the elongated hollow tube body before said pressing is between 2.0 mm and 4.5 mm (any alleged difference would be one of size, and the teachings of Ailinger are for the same technical context, tubular sheaths for endoscopes, col. 1 ll. 12 to col. 2 ll. 16; see MPEP 2144.05(IV)(A)).
Regarding claim 25, Ailinger as modified teaches wherein the inner friction-reducing textured or structured surface has an average roughness value Ra equal to or greater than 1.5 μm (Ailinger explicitly teaches increasing roughness for the same reason as Applicant and in a similar way and teaches at least an overlapping range, col. 9 ll. 44 to col. 10 ll. 13, see MPEP 2144.05(I)).
Regarding claim 26, Ailinger as modified teaches wherein an outer diameter of the working channel tube is between 3.45 mm and 3.65 mm and an inner diameter of the working channel tube is between 2.8 mm and 3.0 mm (any alleged difference would be one of size, and the teachings of Ailinger are for the same technical context, tubular sheaths for endoscopes, col. 1 ll. 12 to col. 2 ll. 16; see MPEP 2144.05(IV)(A)).
Regarding claim 27, Ailinger as modified teaches inserting the working channel tube through an insertion tube to form an insertion cord of the endoscope (col. 9 ll. 59 to col. 10 ll. 13), wherein an entire length of the working channel tube comprises the inner friction-reducing textured or structured surface (col. 9 ll. 59 to col. 10 ll. 13).
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ailinger (US 6,530,881) in view of Jensen (US 2020/0268238) as applied to claim 15 above, and further in view of Specklin (FR 2467674) and Victor (ES 322765).
Regarding claim 17, Ailinger teaches a method substantially as claimed. Ailinger does not disclose wherein said pressing comprises applying pressure against the elongated hollow tube body with one or more rollers or wheels.
However, in the same field of endeavor of producing a tube for an endoscope, [0003], Jensen teaches wherein said pressing comprises applying pressure against the elongated hollow tube body with one or more rollers or wheels (grinding wheel pressed against tube that surrounds a mandrel, [0199] [0216]).
Additionally, solving the same problem of shaping a tube surrounding a mandrel with external pressure (p. 2, 4), Specklin teaches wherein said pressing comprises applying pressure against the elongated hollow tube body with one or more rollers or wheels (mandrel central rod 37 within pipe 14 takes bearing from rollers 35, p. 4).
Additionally, solving the same problem of shaping a tube surrounding a mandrel with external pressure (abstract), Victor teaches wherein said pressing comprises applying pressure against the elongated hollow tube body with one or more rollers or wheels (rollers progressively plague the side parts of each blank around the mandrel to give them the shape of a tube, abstract).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified of Ailinger to use rollers/wheels to pressure the outside of the tube because [0199] [0216] of Jensen teaches a grinding wheel to press on such an endoscope tube, and p. 4 of Specklin and the abstract of Victor teaches that rollers can push on the tube to get them to take the shape of the mandrel, achieving the same end as the pressure chamber of Ailinger (col. 8 ll. 62 to col. 9 ll. 13, col. 10, 30-34, Fig. 12) in a predictable way.
Regarding claim 18, Ailinger as modified teaches wherein applying pressure comprises moving the one or more rollers or wheels along an axial direction of the elongated hollow tube body (as modified, per p. 4 of Specklin and the abstract of Victor, the tube passes between the rollers, and thus the rollers are moved along an axial direction relative to the tube).
Claim(s) 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ailinger (US 6,530,881) in view of Jensen (US 2020/0268238) as applied to claim 14 above, and further in view of Specklin (FR 2467674), Victor (ES 322765), and Awasa (US 2021/0293298).
Regarding claim 19, Ailinger teaches a method substantially as claimed. Ailinger does not disclose wherein said pressing comprises pressing a roller or wheel against the elongated hollow tube body while translating the roller or wheel along an axial direction of the elongated hollow tube body, said pressing further comprising rotating the elongated hollow tube body or the roller or wheel to change an orientation of the elongated hollow tube body relative to the roller or wheel.
However, in the same field of endeavor of producing a tube for an endoscope, [0003], Jensen teaches wherein said pressing comprises pressing a roller or wheel against the elongated hollow tube body (grinding wheel pressed against tube that surrounds a mandrel, [0199] [0216]).
Additionally, solving the same problem of shaping a tube surrounding a mandrel with external pressure (p. 2, 4), Specklin teaches wherein said pressing comprises pressing a roller or wheel against the elongated hollow tube body while translating the roller or wheel along an axial direction of the elongated hollow tube body (mandrel central rod 37 within pipe 14 takes bearing from rollers 35, p. 4).
Additionally, solving the same problem of shaping a tube surrounding a mandrel with external pressure (abstract), Victor teaches wherein said pressing comprises pressing a roller or wheel against the elongated hollow tube body while translating the roller or wheel along an axial direction of the elongated hollow tube body (rollers progressively plague the side parts of each blank around the mandrel to give them the shape of a tube, abstract).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the method of Ailinger to use rollers/wheels to pressure the outside of the tube because [0199] [0216] of Jensen teaches a grinding wheel to press on such an endoscope tube, and p. 4 of Specklin and the abstract of Victor teaches that rollers can push on the tube to get them to take the shape of the mandrel as the tube is moved past the rollers, achieving the same end as the pressure chamber of Ailinger (col. 8 ll. 62 to col. 9 ll. 13, col. 10, 30-34, Fig. 12) in a predictable way.
Further, solving the same problem of using rollers to press a tube on a mandrel ([0062], Fig. 7A), Awasa teaches said pressing further comprising rotating the elongated hollow tube body or the roller or wheel to change an orientation of the elongated hollow tube body relative to the roller or wheel ([0062]), Fig. 7A.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the method of Ailinger to rotate the mandrel while pressing with rollers/wheels because [0062] of Awasa teaches doing so to ensure the rollers press the entire outer peripheral surface of the tube.
Regarding claim 20, Ailinger as modified teaches wherein the roller or wheel comprises a grooved outer circumference having a radius (R) adapted to a radius or diameter (D) of the mandrel (as modified, grooved outer circumference shown in Fig. 2 of Specklin).
Regarding claim 21, Ailinger as modified teaches further comprising heating up the elongated hollow tube body before or during pressing the elongated hollow tube body against the mandrel (Ailinger, col. 8 ll. 36-48).
Regarding claim 22, Ailinger does not disclose wherein heating up the elongated hollow tube body comprises heating up the mandrel before or during pressing the elongated hollow tube body against the mandrel.
However, solving the same problem of shaping a tube surrounding a mandrel with external pressure (abstract), Victor teaches wherein heating up the elongated hollow tube body comprises heating up the mandrel before or during pressing the elongated hollow tube body against the mandrel (means of heating adjacent to the mandrel to activate the material, abstract).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the method of Ailinger to heat the mandrel while pressing because col. 8 ll. 36-48 of Ailinger teaches that the tube should be heated, and the abstract of Victor teaches a predictable way to achieve this by heating the mandrel, and for the same reason to ease formation of the tube under pressure.
Response to Arguments
Applicant's arguments filed July 6, 2026 have been fully considered but they are not persuasive. Applicant argues the modification of Ailinger in view of Jensen is improper as it would eliminate the function and purpose of Ailinger’s forming tool. In doing so, Applicant points out that Ailinger and Jensen form an elongated tube in different ways. Applicant argues that following the method of Jensen in this respect is improper because the method differs from that of Ailinger and that the tool used in Ailinger for this step is no longer needed.
This argument is not persuasive because the method of Ailinger differs from that of the claimed method in how the tube is placed on the mandrel. As noted above, [0215-16] of Jensen teaches that inserting the mandrel within the tube is another way to place such a tube around a mandrel. The combined method produces a working channel tube for an endoscope as in Ailinger, and the interior and exterior texturing steps of Ailinger still applies.
Next, Applicant argues that Jensen does not teach the subject matter for which Ailinger is relied upon. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
On pages 7-8, Applicant argues that the KSR rational underpinning is not present, mischaracterizing a modification as abandoning, and asking for an articulation of a motivation for the modification.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, [0215-16] of Jensen teaches a known method to yield a predictable result with use of a known technique to improve similar devices (placing a tube over a mandrel for subsequent processing to produce the working tube of an endoscope), see MPEP 2143(I)(A)(C).
Regarding claim 23, Applicant disputes the overlapping range, by arguing that Ailinger does not teach a narrower range within the recited range. This argument is not persuasive because this is the nature of an overlapping range. Applicant has not produced any evidence to rebut such a prima facie case of obviousness.
Applicant’s argument regarding claim 24 appears to be derivative of the alleged deficiency of the rejection regarding claim 14 and is similarly unpersuasive.
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 NICHOLAS J CHIDIAC whose telephone number is (571)272-6131. The examiner can normally be reached 8:30 AM - 6:00 PM.
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/NICHOLAS J CHIDIAC/ Examiner, Art Unit 1744
/John J DeRusso/ Primary Examiner, Art Unit 1744
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