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 Objections
Claims 17-27 are objected to because of the following informalities: claim 17 capitalizes “Using”; claim 18 does not have a comma following 17. 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “illumination source” in claims 1 and 17; and “optical elements” in claim 1. Neither usage provides the structure necessary to perform the claimed function. One is a means for providing illumination and the other a means for causing the illumination to increase the field of view.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 1-27 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.
Claims 1 and 17 require an “illumination source”, which, as claimed, is a means for providing illumination onto a field of view of the at least one fiber module. The Specification is not clear as to what is or is not the illumination source. At one point, a generic LED at the distal tip is referred to as the illumination source. The Examiner does not consider this to be the likely meaning here because the discussion of the LED makes not reference and shows no relationship with the optical elements or other components that are seemingly involved in increasing the field of view. Illumination source 160 appears to be the claimed feature. This source includes a substantial number of subcomponents as shown in Fig. 1E. The scope of the claim is unclear as to whether or not all of those features are required in the illumination source. For now, the Examiner considers them to be required. Appropriate correction is necessary.
Claim 17-27 are rejected because claim 17 lacks any specificity and amounts to a generic “use” claim (see MPEP 2173.05(q)). The claim fails to provide any steps related to the use of the invention. While some of the dependent claims provide some steps (see, for example, claim 18 including the step of performing temporal scanning), but these do not clarify the prior “use” statements. The claim still requires “using an endoscope” without defining what it means to do so. Without some limiting language, the scope of the claim cannot be determined.
Claim 25 refers to “different optical elements” where only one optical element is required. Because this implies more than one element, the claim should clarify that said one or a plurality of optical elements, at least for claim 25, is a plurality of optical elements. Appropriate correction is required.
Allowable Subject Matter
Claims 1-27 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The Examiner notes that the claims require the said one or a plurality of optical elements to be configured to cause the illumination to increase the field of view. This seems to be done using polarization multiplexing. The Examiner could not find a reference teaching to do this in the context of an endoscope, and the recommendation to overcome the 112b issues is to clarify how the optical elements cause the increased field of view. There is some concern that this is simply the product of using Glan Thompson prisms at the end of optical fibers and would potentially be obvious, even more so if only a GRIN lens is needed to achieve this result. The Examiner assumes based on the disclosure and the 112f invocation that the optical elements 140 (GRIN, aspheric lenses, etc.) and polarizing optical elements 150 are necessary parts of the invention to achieve the increased field of view. Applicant is asked to clarify what is necessary for this result. Adding a simple lens to the distal tip of a fiber does not create a patentable distinction (see Mitsui (US 3,889,662) showing optical elements and polarizing elements (27, 28, 19 in Fig. 6) at the distal tip of a fiber, but those elements in no way relate to the light source 22), but a particular lens along with a particular illumination source (see 160 and its subcomponents and programming) does.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Bayer et al. (US 2007/0177009) discusses placing a polarizing filter at the distal end of a fiber optic; Mitsui (US 3,889,662).
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/TIMOTHY J NEAL/ Primary Examiner, Art Unit 3795