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 .
Response to Amendment
Amendments to claims 1, 19, 22, 23 of 4/24/2026 acknowledged and entered.
Withdrawal of claim 3 of 4/24/2026 acknowledged and entered.
New claims 24, 25 of 4/24/2026 acknowledged and entered.
Response to Arguments
Applicant’s arguments, see p. 5, para. 3, 4, filed 4/24/2026, with respect to claim 19, 22 have been fully considered and are persuasive. The USC 112 rejection of 1/30/2026 has been withdrawn.
Applicant's arguments filed 4/24/2026 have been fully considered but they are not persuasive. Regarding claim 1, applicant asserts that Tajima does not disclose an extension part being movable such that a longitudinal axis along which the extension part extends differs between a retracted position and an extended position. Examiner is not in accordance. A longitudinal axis may be drawn along the device of Tajima such that it intersects an extended configuration but not a retracted one, and being that the extension part exists in 3 dimensions, it must extend along that axis. See below, examiner marks up figure 16 of Tajima showing an exemplary longitudinal axis A along which the extended part extends in the extended but not retracted position.
Examiner also would remind applicant of the election of species limiting embodiments of this prosecution to figs. 4a-6b. While the amended claim language is applicable to the elected species under broadest reasonable interpretation, it is not abundantly clear to examiner what change is specifically meant by applicant, and examiner does not see any apparent justification for the amendments within the provided remarks. While examiner believes the difference between Rmin and Rmax of fig. 4c-d may support the amended claim language, it cannot be certain in absence of further explanation.
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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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4, 10, 11, 15, 16, 20, 22-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tajima (JP 2016067620 A).
Regarding claim 1, Tajima teaches An endoscope comprising:
a proximal handle (fig. 1, element 11, p. 2, para. 1, operation unit 11) or interface; and
an insertion cord (fig. 1, element 12, p. 2, para. 1, insertion unit 12) extending distally from the handle or interface, the insertion cord including a bending section (fig. 1, element 16, p. 2, para. 1, bending section 16);
a control wheel (fig. 1, element 20, p. 2, para. 1, bending operation section 20) arranged at the handle and having a wheel rotation axis, the control wheel including protrusions (fig. 2, element 32, p. 3, para. 1, angle knobs 32) extending radially away from the wheel rotation axis, the control wheel being configured to control bending of the bending section by rotation of the control wheel around the wheel rotation axis (p. 2, para. 1, bending operation section for changing the bending angle of the bending section),
wherein at least one of the protrusions comprises a base part (fig. 6, element 50, p. 3, para. 5, main body portion 50) and an extension part (fig. 15, element 52, p. 6, para. 1, cam groove 52 supports the swinging motion of the cam 48) connected to the base part via a joint (fig. 15, element 48, p. 6, para. 1, cam groove 52 supports the swinging motion of the cam 48), the extension part being movable from a retracted position to an extended position (fig. 15, element P1, p. 6, para. 1, pushing angle knob in the inner diameter direction as indicated by the arrow P1 reduces the protruding amount) such that a longitudinal axis along which the extension part extends differs between the retracted position and the extended position (see annotated fig. 16 and accompanying response to argument).
Regarding claim 4, Tajima teaches The endoscope of claim 1,
wherein the joint is a hinge joint (fig. 15, element 52, p. 6, para. 1, cam groove 52 forms a hinge about which the cam 48 rotates).
Regarding claim 10, Tajima teaches The endoscope of claim 1,
wherein the extension part is an L-shaped extension part (fig. 15, element 52, p. 6, para. 1, cam groove 52 is shaped like a curved L shape) configured to provide a projection protruding towards the handle when the L- shaped extension part is in the extended position.
Regarding claim 11, Tajima teaches The endoscope of claim 1,
further comprising an extension part lock (fig. 3, element 55, p. 4, para. 4, knob urging springs 55, the biasing force of the springs urges and maintains an extended configuration in the absence of applied force) releasably locking the extension part in the extended position.
Regarding claim 15, Tajima teaches The endoscope of claim 1,
wherein the at least one of the protrusions comprises all the protrusions (fig. 14-16, all protrusions of Tajima are of the extending type).
Regarding claim 16, Tajima teaches The endoscope of claim 1,
wherein the retracted position corresponds to a radius rmn, and the extended position corresponds to a radius rma and satisfying a relationship rma> (rmn + Y mm), wherein Y denotes a radius increase (fig. 15/16, radius changes as a result of retracting protrusions).
Regarding claim 20, Tajima teaches A visualization system comprising:
the endoscope of claim 1; and
a monitor connectable to the endoscope (p. 2, para. 2, image processing apparatus attached to the endoscope via connector 14 can be displayed on a monitor).
Regarding claim 22, Tajima teaches The endoscope of claim 1,
wherein the joint comprises a hinge joint including a hinge tap and hinge grippers rotatably supported by the hinge tap (fig. 14, element 52, p. 2, para. 5, cam groove 52 acts like a gripping part in that it secures the cam 48).
Regarding claim 23, Tajima teaches The endoscope of claim 1,
wherein the base part comprises the hinge grippers (fig. 6, element 52), and wherein in the retracted position the extension part is folded back and over the base part (fig. 15, element 55, p. 4, para. 4, urging spring is folded back and over the base part by compression).
Regarding claim 24, Tajima teaches The endoscope of claim 1,
wherein the longitudinal axis along which the extension part extends in the retracted position is parallel to the longitudinal axis along which the extension part extends in the extended position (See annotated fig. 16, axes A and B and attached response to arguments).
Regarding claim 25, Tajima teaches The endoscope of claim 1,
wherein the extension part is angularly repositionable relative to the base part (fig. 16, element R1/R2, p. 5, para. 3, angular repositioning of the knob in the R2 direction is restricted in the retracted position of the device).
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) 17-19, 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tajima.
Regarding claim 17, Tajima teaches The endoscope of claim 16,
Tajima does not explicitly teach wherein Y is at least 6 mm.
However, Tajima does teach adjusting the diameter of the knob assembly such that it would comfortably fit in the hands of a range of operators (p. 7, para. 1).
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.).
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In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit 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.
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 protrusions of Tajima to extend at least 6mm in order to comfortably fit an operator’s hand (Tajima p. 7, para. 1).
Regarding claim 18, Tajima teaches The endoscope of claim 17,
Tajima does not explicitly teach wherein Y is at least 8 mm.
However, Tajima does teach adjusting the diameter of the knob assembly such that it would comfortably fit in the hands of a range of operators (p. 7, para. 1).
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.).
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In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit 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.
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 protrusions of Tajima to extend at least 8mm in order to comfortably fit an operator’s hand (Tajima p. 7, para. 1).
Regarding claim 19, Tajima teaches The endoscope of claim 18,
Tajima does not explicitly teach wherein Y is at most 12 mm.
However, Tajima does teach adjusting the diameter of the knob assembly such that it would comfortably fit in the hands of a range of operators (p. 7, para. 1).
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.).
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In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit 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.
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 protrusions of Tajima to extend 6-12mm in order to comfortably fit an operator’s hand (Tajima p. 7, para. 1).
Regarding claim 21, Tajima teaches The endoscope of claim 1, wherein the retracted position corresponds to a radius rmn and the extended position corresponds to a radius rma, wherein rma (rmm + Y mm),
Tajima does not explicitly teach wherein Y denotes a radius increase and is at least 6 mm and at most 12 mm.
However, Tajima does teach adjusting the diameter of the knob assembly such that it would comfortably fit in the hands of a range of operators (p. 7, para. 1).
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.).
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In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit 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.
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 protrusions of Tajima to extend 6-12mm in order to comfortably fit an operator’s hand (Tajima p. 7, para. 1).
Claim(s) 12, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tajima as applied to claim 1 above, and further in view of Schutz (US 20230172429 A1).
Regarding claim 12, Tajima teaches The endoscope of claim 1,
Tajima does not explicitly teach wherein the control wheel comprises six protrusions.
However, Schutz teaches wherein the control wheel comprises six protrusions (fig. 2, element 15, [0047], hand wheel 5)
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 wheel of Tajima to include six protrusions as taught in Schutz in order to aid in steering the distal end of the endoscope (Schutz [0046-47]).
Regarding claim 13, Tajima in view of Schutz teaches The endoscope of claim 12,
Further, Tajima teaches wherein the at least one of the protrusions comprises the six protrusions (Tajima teaches having the multiple projections with features of claim 1, whereas Schutz teaches they number 6).
Conclusion
THIS ACTION IS MADE FINAL. 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 TIMOTHY TUAN LUU whose telephone number is (703)756-4592. The examiner can normally be reached Monday-Tuesday, Thursday-Friday.
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, Michael Carey can be reached at 5712707235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY TUAN LUU/ Examiner, Art Unit 3795
/MICHAEL J CAREY/ Supervisory Patent Examiner, Art Unit 3795
