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 .
Status of Claims
This action is in response to the amendment filed on July 1, 2026. Claims 21-25, 30, 32-34, and 36-46 are pending, of which claims 21, 32-34, and 36-38 have been amended, claims 41-46 have been added and claims 1-20, 26-29, 31, and 35 have been canceled.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-25, 30, 32-34, and 36-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. U.S. Patent No. 11,887,502 in view of art of record in the attached notice of references cited and indicated below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 43 and 45 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Specifically, the limitation: “wherein the sensor location has a width greater than that of a portion of the flexboard that is proximal to the sensor location;” includes NEW MATTER.
With regard to this limitation, a review of the Specification at paragraph 53 provides the flexible circuit board is approximately .10 inches wide. However, no details of the width relative to the sensor location are provided in the specification. The drawings also do not depict any such configuration. Therefore, the specification does not provide a written description supporting this limitation.
As a result, the amended claims 43 and 45 contain subject matter which lacks adequate written description, and for at least these reasons, claims 43 and 45 are found to fail the written description requirement.
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.
Claims 32-34, 41, and 46 are rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
In re claims 32, 41, and 46, the claims recite the limitation “fits closely”. The term “closely” is a subjective term that is not defined by the claim, and the specification does not provide an objective standard for ascertaining the meaning of the term “closely” such that one of ordinary skill in the art would be reasonably apprised of the scope of the claim. For purpose of examination, this term is construed as meaning touching with no gap in between.
Claims 33 and 34 depend from a rejected base claim and therefore are rejected for at least the reasons provided for the base claim.
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 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 30, 44, and 45 are rejected under 35 U.S.C. § 103 as being unpatentable over as unpatentable over US Publication No. 2016/0000301 to Langell et al. (“Langell”) in view of US Patent No. 7,976,459 to Laser (“Laser”).
In claim 30, Langell discloses a simulation surgical camera scope [Abstract, Figs. 1-5 scope #110 is suitable for demonstration or simulation purpose, e.g., as its portable, light weight, can different borescope tubes attached, and the tip/borescope may be disposable] comprising: a handle defining an interior [Fig. 4, #200]; a elongate shaft having a proximal end, a distal end and a longitudinal axis, the proximal end of the elongate shaft connected to the handle with the longitudinal axis extending between the distal end of the elongate shaft to the proximal end of the elongate shaft, the elongated shaft including a sidewall having a cylindrical shape defining a lumen extending from the distal end of the elongate shaft to the proximal end of the elongate shaft including a proximal opening in which the lumen of the elongate shaft opens to the interior of the handle [Figs. 4a and 4b show interchangeable tube portion 400 of scope having elongate shaft with lumen extending between distal end housing lens and sensor]; a lens located within a lens housing located within a lens mount, the lens, lens housing, and the lens mount located within the lumen of the elongate shaft [Figs 6a and 6B show lens 530 in lens housing 611 with mount 614 that fit within distal end of elongate shaft]; a cover at the distal end of the elongate shaft [Figs 6a and 6B show cover 635], the lens located between the cover and the lens mount [Figs. 6B show lens 630 between cover 635 and mount 614]; an image sensor located within a proximal portion of the lens mount [Fig. 6B shows sensor 620 on board 640 within proximal portion of mount 614]; and at least one light emitting diode (LED) [Figs. 6a and 6b show light emitting diode 610].
Langell does not expressly teach that the LED is located between the cover and the lens mount. However, Laser teaches a lens located within a lens mount 11 with a cover 23, an image sensor 15; and at least one light emitting diode (LED) 14 located between the cover and the lens mount, see, e.g., Fig. 2.
Langell and Laser are both considered to be analogous to the claimed invention because they are in the same field of surgical endoscopes including LED lighting at their distal ends. Because both Langell and Laser teach surgical endoscopes with offset LED lighting, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to substitute on positioning of the LED in Langell (e.g., next to cover) with an alternate position of Laser (e.g., between cover and lens) to achieve the predictable result of providing illumination for image capture in a surgical scope.
In re claim 44, Langell discloses a sensor mount located within the lumen of the elongate shaft, wherein the image sensor is positioned between the sensor mount and the lens mount, and wherein the lens mount is affixed to the sensor mount [Figs 6A and 6B show sensor mount 640 for sensor 620 with the sensor 620 positioned between the mount 640 and the lens mount 614. ¶74 describes PCB 640 (Sensor mount) may be mounted to housing 614 (lens mount) to secure (affix) PCB 640].
In re claim 45, Langell lacks but Laser teaches a flexboard that extends through the lumen of the elongate shaft, the flexboard comprising a sensor location and a lighting location, wherein the image sensor is coupled to the sensor location of the flexboard, wherein the at least one LED is coupled to the lighting location of the flexboard, wherein the lighting location of the flexboard is positioned between the cover and the lens mount [Fig. 2 shows an assembly with image sensor 15/20 and LED 14 mounted on Flexboard 17 and extension 13 where lighting portion (near 22 of 13) is between the cover 23 and the lens mount 11; col. 6, l. 18-25, col 6., l. 58-col. 7, l. 10 flexible circuit 17 connects through sleeve 3 to controller 5].
Langell and Laser are all considered to be analogous to the claimed invention because they are in the same field of surgical endoscopes. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the endoscope of Langell in view of Huang to include the flexible circuit board 17, as taught by Laser, to improve use of the scope, e.g., reduce weight and cost of the scope and aid in assemble of components in the small spaces of the tube (See, e.g., Laser col. 1 l. 64-col. 2 l. 37).
Langell in view of Laser doesn’t explicitly teach the sensor location has a width greater than that of a portion of the flexboard that is proximal to the sensor location. However, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to make alter the dimension of the board to have smaller width than the sensor location as the selection of dimensions will depend on the specific implementation of the scope and/or what application it sized for and there is a limited range of possible sizes for any particular application; therefore, the choice of an explicit dimension are part of routine scope design; moreover, Applicant has not disclosed that the dimension of width solves any stated problem or is for any particular purpose.
In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the flexboard width of Laser to have a dimensional width less than the sensor location as the specific dimension of the board of Laser would not cause the device of Laser to perform differently as it has been held that where the only difference between the prior art and the claims is 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 is not patentably distinct from the prior art device, In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Response to Arguments
Applicant's arguments filed July 1, 2026 have been fully considered.
The rejection of claims 21-25, 30, 32-34, and 36-46 for double patenting in maintained. Applicant did not provide arguments regarding this rejection.
The objection to the drawings is withdrawn in view of Applicant’s amendment to the claims.
The objection to claim 35 is withdrawn in view of Applicant’s amendment to the claims.
The previous rejection of claims 21-29 and 34 under Section 112(b) is withdrawn; however, a new rejection of claims 32-34, 41, and 46 is made in view of Applicant’s amendments.
With regard to the rejection of claims 21-25, 32-34, 36, and 37 as obvious under Section 103 Applicant’s arguments with regard to these claims are persuasive. Therefore, the rejections of claims 21-25, 32-34, 36, and 37 for obviousness are withdrawn in view of Applicant’s amendments to the claims and remarks.
The rejection of claim 30 under Section 103 is maintained for the reasons given above.
With regard to claim 30 Applicant argues:
However, with reference to Fig. 2, Laser describes a wide angle lens 11 being "[i]mmediately behind the window 23," and "[t]he leading surface of the LED 14 is also positioned immediately against the window 23." As such, Laser does not teach or suggest an LED located between the cover and the lens mount. Rather, Laser illustrates an LED and lens mount being adjacent to each other, with both the LED and lens mount being positioned immediately against the window 23.
Fig. 2 of Laser is reproduced below with a line added through the cover/window 23, the LED 14 and the lens mount 11. Along this added line, the LED is seen to be located between the window 23 (lowest portion) and the lens mount 11. Applicant’s claim does not include any orientation or other limiting description of the claimed elements that precludes such an interpretation of what “between” means.
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Applicant also asserts that Langell teaches away from the configuration of cover and light placement of Laser because of light diffusion; however, Laser addresses the issue of light diffusion from the configuration of window, LED, and lens by teaching of placing a barrier, such as a thin, opaque light separator, between the illuminating LED and the objective lens. In particular, extending the separator all the way to the inner surface of the window eliminates the undesired crosstalk from the LED and lens. Such separator can be made of black vinyl film, black anodized aluminum foil, or other opaque material (See, e.g., col. 4, ll. 51-62).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited.
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 Andrew Bodendorf whose telephone number is (571) 272-6152. The examiner can normally be reached M-F 9AM-5PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached on (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW BODENDORF/Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
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