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 .
Disposition of Claims
Claims 1-20 are pending.
Claims 1-16 & 20 are rejected.
Claims 17-19 are withdrawn.
Response to Arguments
Applicant’s arguments, see Page 7, filed March 27, 2026, with respect to the objection to Claim 14 have been fully considered and are persuasive in light of amendments to the claims.
The objection to Claim 14 has been withdrawn.
Applicant’s arguments, see Pages 7-11, filed March 27, 2026, with respect to the rejections under 35 U.S.C. §§ 102 & 103 of Claims 1-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claims 1-16 & 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ye et al. (hereinafter "Ye") (WO 2014/158140 A1) in view Siegmund et al. (hereinafter "Siegmund") (U.S. 5,423,312).
Regarding Claim 1, Ye discloses an imaging adapter (Fig. 29, 200; Page 8, Para. 3), the imaging adapter comprising:
a guiding element body (Figs. 11-12 & 29, a illumination channel assembly comprising an illumination subassembly 202, comprising 12 and 19, and an optical subassembly 214, comprising 14 and 28; Page 6 ¶3, Page 8 ¶3 & Page 4 ¶1); and
a fiber bundle (a bundle of 32; Page 6 ¶3) having a plurality of optical fibers (Fig. 12, 32; Page 6 ¶3);
wherein the imaging adapter is configured to be connected with a camera head of a medical imaging system (Fig. 29, 200 has a 206 which capable of coupling to a camera head; Page 8 ¶3);
the imaging adapter is further configured to illuminate an operating area arranged in front of the imaging adapter in a longitudinal direction (32 are disposed at 10 with ends directed distally and as such would be capable of illuminating an operating area arranged longitudinally in front of 200; see Fig. 12);
the guiding element body comprises a guiding slot (Fig. 17, a space between 13 of 12/19 of 202 and 15 of 14/28 of 214; Page 6 ¶3) extending through the guiding element body in the longitudinal direction (see Fig. 17);
in a plane orthogonal to the longitudinal direction the guiding slot is annular (see Fig. 13) and segmented in a circumferential direction so that the guiding slot forms at least two separate guiding slot segments (Fig. 13, three segments defined by 16 which are flush with a distal face of 200; Page 6 ¶1 & ¶3), each of the at least two guiding slot segments:
being closed in both an inward and an outward radial direction (Figs. 1 & 13, each segment of the three segments are radially bound between 12 and 14; Page 6 ¶); and
having two fully closed ends in a circumferential direction (Fig. 13, each segment of the three segments are circumferentially bound between two 16; Page 6 ¶3);
in a distal part of the fiber bundle the optical fibers are split apart from each other (Fig. 13, 32 are split into three 34; Page 6 ¶3);
the split apart optical fibers extend through the guiding slot segments to a distal end face of the guiding element body (see Fig. 12); and
each guiding slot segment accommodates at least one of the optical fibers (Fig. 13, each segment of the three segments accommodate a 34 which comprises a plurality of 32; Page 6 ¶3).
Regarding wherein the imaging adapter is for fluorescence imaging, the intended use language “for fluorescence imaging” does not positively recite any structural limitations so as to carry out the function, accordingly the prior art Ye can carry out the function, i.e. the intended use recited absent any specific structure recited to do so.
Ye fails to explicitly disclose wherein in a proximal part of the fiber bundle, the optical fibers form a compact bundle.
However, Siegmund teaches an imaging adapter (Fig. 1, a scope assembly comprising 27 and 37; Col. 4, Lines 23-31), the imaging adapter comprising:
a guiding element body (Fig. 1, 37; Col. 4, Lines 23-25); and
a fiber bundle having a plurality of optical fibers (Fig. 1, a bundle of 25; Col. 4, Line 26);
wherein the imaging adapter is configured to be connected with a camera head of a medical imaging system (Fig. 1, 3; Col. 4, Lines 20-23);
the imaging adapter is further configured to illuminate an operating area arranged in front of the imaging adapter in a longitudinal direction (Col. 4, Lines 26-28);
in a proximal part of the fiber bundle the optical fibers form a compact bundle (Fig. 1, 29; Col. 4, Lines 32-33); and
in a distal part of the fiber bundle the optical fibers are split apart from each other (Fig. 1, 41; Col. 4, Lines 57-66).
The advantage of the proximal part of the fiber bundle of the plurality of optical fibers being compact is to prevent the optical fibers from interfering with the optical path and respective optics (Siegmund; Col. 4, Lines 30-33).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the proximal part of the fiber bundle of the plurality of optical fibers as disclosed by Ye, to be compact as taught by Siegmund, to prevent the optical fibers from interfering with the optical path and respective optics (Siegmund; Col. 4, Lines 30-33).
Regarding Claim 2, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 1. Ye further discloses wherein the plurality of optical fibers are guided in the guiding slot linearly and parallel to each other (see Fig. 17).
Regarding Claim 3, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 2. Ye further discloses wherein the plurality of optical fibers are guided in the guiding slot parallel to an optical axis of the imaging adapter for a predetermined distance (32 extend in the space parallel to an axis of 22 for a distance; see Fig. 17).
Regarding Claims 4 & 5, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 3. Ye, as previously modified by Siegmund fails to explicitly disclose wherein the predetermined distance is 4 mm to 6 mm.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the predetermined distance of Ye to be 4 mm to 6 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, imaging adapter would not operate differently with the claimed predetermined distance. Further, Applicant places no criticality on the range claimed, indicating that “the predetermined distance can be at least 10 mm” (see Page 4, Lines 27-28 of Applicant’s specification).
Regarding Claim 6, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 1. Ye further discloses wherein in the plane orthogonal to the longitudinal direction, the guiding slot segments have a shape of ring segments (see Fig. 13).
Regarding Claim 7, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 1. Ye further discloses wherein the plurality of optical fibers in each guiding slot segment form a fiber layer (32 are stacked upon each other radially in each segment of the three segments; see Fig. 13).
Regarding Claim 8, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 1. Siegmund further teaches wherein end faces of the optical fibers, which are arranged at the distal end face of the guiding element body, are grinded and polished (Col. 4, Lines 28-30).
Regarding Claim 9, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 1. Ye further discloses wherein the guiding element body comprises an outer ring element (Fig. 17, an outer tube comprising 12 and 19; Page 6 ¶3) and an inner ring element (Fig. 17, an inner tube comprising 14 and 28; Page 6 ¶3) that together form the guiding slot (see Fig. 17).
Regarding Claim 10, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 9. Ye further discloses wherein an outer surface of the inner ring element or an inner surface of the outer ring element comprises at least two radial ledges (Figs. 3 & 17, 16; Page 6 ¶1) that extend in a radial direction to an inner surface of the outer ring element or to an outer surface of the inner ring element, respectively (see Fig. 3).
Regarding Claim 11, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 1. Ye further discloses wherein only a first longitudinal part of the guiding slot is segmented (the space between 13 of 12 and 15 of 14 is segmented; see Fig. 17), and in a second longitudinal part the guiding slot is continuous in the circumferential direction (the space between 13 of 19 and 15 of 28 is not segmented; see Fig. 17).
Regarding Claim 12, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 11. Ye further discloses wherein the first longitudinal part of the guiding slot is arranged at a distal end of the imaging adapter (Fig. 2, the space between 13 of 12 and 15 of 14 is disposed in 10; Page 6 ¶1).
Regarding Claim 13, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 1. Ye further discloses wherein the guiding element body comprises an annular base component (Fig. 17, a proximal portion comprising 19 and 28; Page 6 ¶3) and a distal component (Fig. 17, 10; Page 6 ¶1), the distal component protrudes from a distal-most face of the base component in the longitudinal direction (see Figs. 8, 11 and 17) , and a distal end face of the distal component is the distal end face of the guiding element body (see Fig. 17).
Regarding Claim 14, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 1. Siegmund further teaches an imaging unit (Fig. 1, 5; Col. 3, Lines 44-45),
an outer hull element (Fig. 1, 27; Col. 4, Line 30-33), and
a tubular element (Fig. 1, 1; Col. 3, Lines 42-44),
wherein the imaging unit is arranged inside a central opening of the tubular element (see Fig. 1), and
the guiding element body surrounds the tubular element concentrically (see Fig. 1) and the outer hull element surrounds the guiding element body concentrically (see Fig. 1).
Regarding Claim 15, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 14. Siegmund further teaches wherein the proximal part of the fiber bundle enters the outer hull element through an opening in the outer hull element (Fig. 1, 31; Col. 4, Lines 32-35), and a point, where the optical fibers of the fiber bundle are split apart from each other, is arranged inside the outer hull element (see Fig. 1).
Regarding Claim 16, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 1. Ye further discloses an ocular funnel configured to be connected to an adapter of the camera head (Fig. 29, 206 which is capable of coupling to a camera head; Page 8 ¶3).
Regarding Claim 20, Ye, as previously modified by Siegmund, teaches the imaging adapter according to Claim 1. Ye further discloses wherein each of the at least two guiding slot segments being open in only the longitudinal direction (see Fig. 13).
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 STEPHEN FLOYD LONDON whose telephone number is (571)272-4478. The examiner can normally be reached Monday - Friday: 10:00 am ET - 6:00pm ET.
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/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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