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 . 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 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.
Response to Amendment / Arguments
The response and amendments, filed 6/8/26, has been entered. Claims 1-12 are pending upon entry of this Amendment. The previous objections and 112 rejections are withdrawn due to amendments and persuasive arguments. Applicant’s arguments regarding the prior art rejections of claims have been fully considered, the argument is based on Fengler is not analogues art, and lack of motivation to combine Fengler with Taylor and modification requires changes to the fundamental design of Taylor :
Response:
MPEP § 2141.01(a) (Analogous and Nonanalogous Art): The primary section outlining the criteria for determining whether a prior art reference is analogous (and therefore usable in an obviousness rejection under 35 U.S.C. 103). It defines the two-part test: (1) if it is from the same field of endeavor, or (2) if it is reasonably pertinent to the specific problem to be solved
in this case, the question is not whether one reference is for a mechanical system and the other is for medical endoscopy. Instead, it is: What problem does the missing limitation solve?
The missing limitation is:
the image detector including a light-filtering lens cap configured for filtering a first portion of UV rays from the UV light source to allow passage of a second portion of UV rays of the dye being illuminated by the UV light source.
That is an optical imaging problem, not a "medical" problem. Taylor: Uses UV light and fluorescent dye to detect leaks. Needs to observe fluorescence. Fengler: Uses UV light and fluorescent dye to observe tissue, an optical filter to reject excitation UV and transmit fluorescence. Thus, Fengler addresses essentially the same technical problem: How to improve fluorescence imaging by preventing excitation light from overwhelming the detector while allowing emitted fluorescence to be detected. Examiner holds that Fengler is reasonably pertinent to the particular problem faced by the inventor. Furthermore, based on 2143(B) (simple substitution) or 2143(A) (combining known elements): It would have been obvious to incorporate the optical filter of Fengler into the borescope of Taylor because Fengler teaches that filtering the excitation UV while transmitting fluorescent emission improves fluorescence detection. Incorporating the known filter into the fluorescence imaging system of Taylor would have predictably improved the detector's ability to distinguish fluorescent dye emissions from excitation light. Also based on 2143(A): Combining prior art elements according to known methods to obtain predictable results. and 2143(B): Substituting one known optical component for another to obtain predictable results. The reason to combine comes directly from Fengler 's teaching that the filter improves fluorescence detection. In other words, the system illuminates fluorescent dye with UV. Camera detects fluorescence. Need to reject excitation light and pass fluorescence. This is the same optical engineering problem, regardless of whether the object is a pipe or a human tissue.
Finally:
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In this case, Applicant has not provided any evidence using Fengler’s filtration into Taylor’s borescope does not provide the claimed function. Neither reference provides any indication that their combination would not have yielded a predictable result, the combination of arts meet the claimed limitations.
Therefore, the argument is not persuasive.
Claim Rejections - 35 USC § 103
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Taylor, US 20030117617 A1 in view of Fengler, US20070015963A1.
Claim 1
Taylor in fig.1 teaches:
A system for detecting leaks in a mechanical system, the system comprising:
a dye injector configured to store and inject a fluorescent dye into the mechanical system (e.g., ¶0025);
a borescope (10) having one or more tubes (20,12¶0019: one or more fiber optic cables may be provided for delivering the blue/black light from the bore-scope housing 12 to the bore-scope 22) each tube (20,12) including a UV light source (e.g., ¶0009 and using switches 16,18 in ¶0016-¶0022: blue light sources can be co-located with the bore-scope 22); and
an image detector (bore-scope 22 and ¶0028 teaches eyepiece can be replaced with CCD camera which reads on an image detector) connected with at least one of the one or more tubes (20,12) and configured to image a field-of-view of dye in the mechanical system being illuminated by the UV light source (e.g., ¶0023¶0016¶0028).
Taylor teaches lens cap 14 but does not specifically teach the image detector including a light-filtering lens cap configured for filtering a first portion of UV rays from the UV light source to allow passage of a second portion of UV rays of the dye being illuminated by the UV light source.
In the similar field of endeavor, Fengler teaches the image detector including a light-filtering lens cap (e.g., 79 in figs.2B-3, 118 in fig.7A-B) configured for filtering a first portion of UV rays (see e.g., fig.6A green and red are blocked or filtered, 6D blue and red filtered but green is passed e.g., ¶0049) from the UV light source 52A to allow passage of a second portion of UV rays (fig.6A blue is passed) of the dye being illuminated by the UV light source (e.g.,¶0049 and figs.6A,6D).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Fengler‘s light-filtering for Taylor‘s UV rays and lens and the modified Taylor’s image detector including a light-filtering lens cap configured for filtering a first portion of the modified Taylor’s UV rays from the UV light source to allow passage of a second portion of UV rays of the dye being illuminated by the UV light source. One of ordinary skill in the art knows filter blocks excitation light from reaching an image sensor, but passes some blue light and would have been motivated to make this modification in order to block excitation light from reaching an image sensor, but transmitting some fluorescence light so that both primary fluorescence images and color/white light images of tissue can be produced (e.g., Fengler ¶0007).
Claim 2
Taylor in view of Fengler teaches the system in accordance with claim 1, Fengler teaches wherein the light-filtering lens cap of the image detector is a shade of yellow (e.g., fig.9 filter 202 ¶0085) for the same reason and motivation above.
Claim 3
Taylor in view of Fengler teaches the system in accordance with claim 1, Taylor further teaches wherein at least one of the one or more tubes 20 is flexible (¶0017).
Claim 4
Taylor in view of Fengler teaches the system in accordance with claim 1, Taylor further teaches wherein at least one of the one or more tubes 20 is rigid (¶0029).
Claim 5
Taylor in view of Fengler teaches the system in accordance with claim 1, Taylor further teaches wherein the image detector (CCD camera) is configured to detect and collect still images and/or video images (¶0028 CCD camera).
Claim 6
Taylor in view of Fengler teaches the system in accordance with claim 1, Fengler teaches wherein the second portion of UV rays is a shade of blue waves (e.g., fig.6A) for the same reason and motivation as cited above.
Claim 7
Taylor in view of Fengler teaches the system in accordance with claim 1, Taylor teaches wherein the image detector 22 is connected at a distal end of the at least one of the one or more tubes 20 and coincident with the UV light source 16 (this is also taught by Fengler as cited above)1.
Claim 8
Taylor in view of Fengler teaches the system in accordance with claim 1, Taylor further teaches comprising a display (¶0028 LCD screen) configured to receive and display image or video received by the image detector (camera ¶0028) through the light-filtering lens cap 14.
Claim 9
Taylor in view of Fengler teaches the system in accordance with claim 1, Taylor teaches further comprising one or more user-operable controls for controlling the UV light source, the image detector, and/or the one or more tubes (Switches 18,16¶0016) (Fengler also teaches controller 64 to teach this limitation).
Claim 10
Taylor in fig.1 teaches:
A system for detecting leaks in a mechanical system, the system comprising:
a dye injector configured to store and inject a fluorescent dye into the mechanical system (e.g., ¶0025);
a borescope 10 having one or more tubes(20,12¶0019: one or more fiber optic cables may be provided for delivering the blue/black light from the bore-scope housing 12 to the bore-scope 22), each tube including a UV light source(e.g., ¶0009 and using switches 16,18 in ¶0016-0022 : blue light sources can be co-located with the bore-scope 22);
an image detector (22, ¶0028 eyepiece can be replaced with CCD cameral) connected with at least one of the one or more tubes (20,12) and configured to image a field-of-view of dye in the mechanical system being illuminated by the UV light source (e.g., ¶0023¶0016¶0028); and
a display (¶0028: LCD color display screen) in communication with the image detector (22, ¶0028 camera) and configured to receive and display image or video received by the image detector( image from camera¶0028) through the lens cap (14).
Taylor does not specifically teach image detector connected with at least one of the one or more tubes and configured to image a field-of-view of dye in the mechanical system being illuminated by the UV light source, the image detector including a light-filtering lens cap configured for filtering a first portion of UV rays from the UV light source to allow passage of a second portion of UV rays of the dye being illuminated by the UV light source; In the similar field of endeavor, Fengler teaches the image detector including a light-filtering lens cap (e.g., 79A in figs.2B-3, 118 in fig.7A-B) configured for filtering a first portion of UV rays from the UV light source 52A to allow passage of a second portion of UV rays of the dye being illuminated by the UV light source (e.g.,¶0049 and figs.6A,6D).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Fengler‘s light-filtering for Taylor‘s UV rays and lens and the modified Taylor’s image detector including a light-filtering lens cap configured for filtering a first portion of the modified Taylor’s UV rays from the UV light source to allow passage of a second portion of UV rays of the dye being illuminated by the UV light source. One of ordinary skill in the art knows would have been motivated to make this modification in order to block excitation light from reaching an image sensor, but passes some blue light so that both fluorescence images and color/white light images of tissue can be produced (e.g., Fengler ¶0007).
Claim 11
Taylor in view of Fengler teaches the system in accordance with claim 10, Taylor teaches wherein the display (¶0028 LCD color display screen) is in communication with the image detector (camera) via a wired connection (it is well known to connect camera and monitor screen via wired).
Claim 12
Taylor in view of Fengler teaches the system in accordance with claim 10, Fengler in fig.20 teaches wherein the display is in communication with the image detector via a wireless connection (¶0255¶0257¶0259). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Fengler‘s wireless connection for the modified Taylor‘s image detector connecting to its display. One of ordinary skill in the art well knows these wireless connections would have been motivated to make this modification in order to at least convenient application of connecting devices without wires.
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 Fatemeh E. Nia whose telephone number is (469)295-9187. The examiner can normally be reached 9:00 am to 4:00 pm. 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, Kristina DeHerrera can be reached at (303) 297-4237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FATEMEH ESFANDIARI NIA/Examiner, Art Unit 2855
1 Term coincident is so broad to be taught by both primary and secondary art. Furthermore, the examiner notes that it has been held that a mere rearrangement of element without modification of the operation of the device involves only routine skill in the art. in re Japiske, 86 USPQ 70 (CCPA 1950). In this case, there is no criticality to the limitation related to tubes being coincident with the UV light source).
Prosecution Insights