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 .
Notice of Amendment
The Amendment filed 2/18/2026 has been entered. Claims 21, 25-33, 39, 42-45 are pending in the application with claims 21, 39 amended, claims 1-20, 22-24, 34-38, 40, 41 cancelled.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 21, 25-33, 39, 42-45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,864,735 (hereinafter ‘735). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-11 of ‘735 teach all of the claimed limitations of Claims 21, 25-33, 39 and 42-45 of the present application with non-patentably distinct differences in claim terminology.
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.
Claims 21, 25-33, 39 and 42-45 are rejected under 35 U.S.C. 103 as being unpatentable over Sahney et al. (US Patent Application Publication No. 2012/0078038, hereinafter Sahney) in view of Adams (US Patent Application Publication 2012/0010464).
In regard to claim 21, Sahney discloses a continuous flow endoscope (100, Fig. 6), comprising:
an elongated tubular member (118) having a longitudinal axis and defining a lumen in an interior of the elongated tubular member (Fig. 6);
a first tube (142) disposed within the lumen of the elongated tubular member (Fig. 6), the first tube defining a first channel having a first cross-sectional area substantially perpendicular to the longitudinal axis, the first channel fluidly coupled to an inflow fluid port (146, Par. 38,41) for inflow of fluid through the first channel (Fig. 6);
a second tube (144) disposed within the lumen of the elongated tubular member outside the first tube (Fig. 6), the second tube defining a second channel configured to receive an instrument having a circular cross-section (the channel is capable of receiving an instrument having a circular cross-section), the second channel fluidly isolated from the first channel (Fig. 6) and fluidly coupled to an outflow fluid port (148, Par. 38,41) for outflow of fluid through the second channel (Fig. 6), the second channel defining a second cross-sectional area substantially perpendicular to the longitudinal axis (Fig. 6); and
an optics device (124, Figs. 2A,6 disposed in a third channel of the lumen of the elongated tubular member not occupied by the first channel or the second channel (Fig. 6).
Sahney does not expressly teach wherein the second cross-sectional area of the second channel is different from the first cross-sectional area of the first channel, and wherein, with the instrument received within the second channel, a portion of the second channel protrudes from the instrument on one side of the instrument to define an unoccupied cross-sectional area of the second channel, the unoccupied cross-sectional area of the second channel substantially similar to the first cross- sectional area of the first channel such that an available cross-sectional area of the second channel for fluid outflow is substantially similar to an available cross-sectional area of the first channel for fluid inflow.
Adams teaches an analogous hysteroscope having a working channel (206) and an insert (1402) comprising first and second channels for fluid delivery separated by a wall (1404). The first and second channels can have the same cross-sectional shape or different cross-sectional shape as illustrated in Figs. 15C, 15D and 15E (Par. 94).
It would’ve been obvious to one of ordinary skill in the art at the time of the invention to modify the first and second channels of Sahney to have different cross-sectional shapes, such as the cross-sectional shapes illustrated in Fig. 15D, as taught by Adams since Adams teaches it’s well known in the art to modify the channels within a hysteroscope to have the same or different cross-sections. There being no unexpected results in modifying the first and second channels of Sahney to have different cross-sectional shapes as taught by Adams.
Sahney and Adams teach of surgical instruments being capable of insertion within the second channel / outflow channel and since the surgical instrument is not a positively recited element of the claim, a surgical instrument having a size to allow the unoccupied cross-sectional area of the second channel to substantially match the first cross-sectional area of the first channel would be capable of insertion within the second channel / outflow channel.
In regard to claim 25, Sahney teaches wherein the second channel is further configured to operate without the instrument inserted through the second channel (the second channel is capable of operating without an instrument inserted therein).
In regard to claim 26, Sahney teaches wherein the interior of the elongated tubular member is configured to maintain continuous fluid inflow and fluid outflow therethrough (the device is capable of performing continuous fluid flow, Par. 38).
In regard to claim 27, Sahney teaches wherein the second channel is defined by an inner elongated tubular member, the inner elongated tubular member being removable from the interior of the elongated tubular member (flow device (140) is removably inserted within the tubular member, Par. 41, wherein tubular elements (142,144) of the flow control device can be separate elements enabling them to be individually removed, Par. 38).
In regard to claim 28, Sahney teaches wherein the optics device is configured to be removably received in the third channel of the interior of the elongated tubular member (Fig. 6).
In regard to claim 29, Adams teaches wherein a shape of the second cross-sectional area is different from a shape of the first cross-sectional area (Figs. 15C,15D).
In regard to claim 30, Sahney teaches wherein the instrument is configured to be removably received in the second channel (Fig. 2A illustrates a instrument received within the second channel).
In regard to claim 31, Sahney teaches wherein the instrument substantially fills the second cross-sectional area in at least one cross-sectional dimension of the second channel when the instrument is inserted through the second channel (an instrument is capable of being inserted within the second channel in the claimed fashion).
In regard to claim 32, Adams teaches further comprising a plurality of illumination fibers disposed in the free space of the lumen of the elongated tubular member and at least partially surrounding the optics device (Fig. 3B shows illumination fibers (312) surrounding the visualization element (207)).
In regard to claim 33, Adams teaches wherein the plurality of illumination fibers and the optics device fully occupy the free space of the lumen of the elongated tubular member (Fig. 3B shows illumination fibers (312) surrounding the visualization element (207)).
In regard to claim 39, Adams discloses a continuous flow endoscope (100, Fig. 6), comprising:
an elongated tubular member (118) extending along a longitudinal axis, the elongated tubular member defining a lumen in an interior of the elongated tubular member (Fig. 6);
a proximal body (146,148) disposed at a proximal end of the elongated tubular member an inflow port and an outflow port coupled to the proximal body and disposed in communication with the lumen of the elongated tubular member to enable continuous inflow and outflow of fluid to and from a surgical site via the lumen of the elongated tubular member (Fig. 6);
a first tube (142) disposed within the lumen of the elongated tubular member, the first tube defining a first channel having a first cross-sectional area substantially perpendicular to the longitudinal axis (Fig. 6);
a second tube (144) disposed within the lumen of the elongated tubular member outside the first tube (Fig. 6), the second tube defining a second channel configured to receive an instrument having a circular cross-section inserted through the proximal body (the channel is capable of receiving an instrument having a circular cross-section) and the elongated tubular member and into the surgical site (Fig. 6), the second channel fluidly isolated from the first channel (Fig. 6), the second channel defining a second cross-sectional area substantially perpendicular to the longitudinal axis (Fig. 6); and
an optics device (124, Figs. 2A,6) disposed in a third channel defined within the lumen of the elongated tubular member not occupied by the first channel or the second channel (Fig. 6),
wherein the first channel is coupled to one of the inflow port for the inflow of the fluid or the outflow port for the outflow of the fluid (Par. 38, connected via inflow port (46)), wherein the second channel is coupled to another of the inflow port for the inflow of the fluid or the outflow port for the outflow of the fluid (Par. 38, connected via outflow port (48)), and wherein the first and second channels are fluidly isolated from one another within the lumen of the elongated tubular member (Fig. 6).
Sahney does not expressly teach wherein the second cross-sectional area of the second channel is different from the first cross-sectional area of the first channel; wherein, with the instrument received within the second channel, a portion of the second channel protrudes from the instrument on one side of the instrument to define an unoccupied cross-sectional area of the second channel, the unoccupied cross-sectional area of the second channel substantially similar to the first cross-sectional area of the first channel.
Adams teaches an analogous hysteroscope having a working channel (206) and an insert (1402) comprising first and second channels for fluid delivery separated by a wall (1404). The first and second channels can have the same cross-sectional shape or different cross-sectional shape as illustrated in Figs. 15C, 15D and 15E (Par. 94).
It would’ve been obvious to one of ordinary skill in the art at the time of the invention to modify the first and second channels of Sahney to have different cross-sectional shapes, such as the cross-sectional shapes illustrated in Fig. 15D, as taught by Adams since Adams teaches it’s well known in the art to modify the channels within a hysteroscope to have the same or different cross-sections. There being no unexpected results in modifying the first and second channels of Sahney to have different cross-sectional shapes as taught by Adams.
Sahney and Adams teach of surgical instruments being capable of insertion within the second channel / outflow channel and since the surgical instrument is not a positively recited element of the claim, a surgical instrument having a size to allow the unoccupied cross-sectional area of the second channel to substantially match the first cross-sectional area of the first channel would be capable of insertion within the second channel / outflow channel.
In regard to claim 42, Adams teaches wherein a shape of the second cross-sectional area is different from a shape of the first cross-sectional area (Figs. 15C, 15D).
In regard to claim 43, Adams teaches wherein the instrument substantially fills the second cross-sectional area in at least one cross-sectional dimension of the second channel when the instrument is inserted through the second channel (an instrument is capable of being inserted within the second channel in the claimed fashion).
In regard to claim 44, Adams teaches further comprising a plurality of illumination fibers disposed in the free space of the lumen of the elongated tubular member and at least partially surrounding the optics device (Fig. 3B shows illumination fibers (312) surrounding the visualization element (207)).
In regard to claim 45, Adams teaches wherein the plurality of illumination fibers and the optics device fully occupy the free space of the lumen of the elongated tubular member (Fig. 3B shows illumination fibers (312) surrounding the visualization element (207)).
Response to Arguments
Applicant’s arguments with respect to claims 21, 25-33, 39, 42-45 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.
Examiner Notes
In order to advance prosecution and overcome the prior art rejections, the examiner suggests positively reciting the instrument in order to provide more patentable weight to the limitations regarding the unoccupied cross-sectional area being substantially similar to the first cross-sectional area.
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 RYAN N HENDERSON whose telephone number is (571)270-1430. The examiner can normally be reached Monday-Friday 6am-5pm (PST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan Nguyen can be reached at 571-272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN N HENDERSON/Primary Examiner, Art Unit 3795 May 2, 2026
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