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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/09/2026 has been entered.
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.
Claim(s) 1-3, 5-6, 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoshino et al. (JP 2015165842, Sep. 24, 2015) (hereinafter “Hoshino”) in view of Koitabashi (US 2009/0149709 A1, Jun. 11, 2009) (hereinafter “Koitabashi”).
Regarding claim 1: Hoshino discloses an endoscope operation part comprising: a grip portion that is provided on one side of the endoscope operation part in a longitudinal axis direction (fig. 1, grip 104; [0024], [0032]); an operation part main body that is provided on the other side which is opposite to the one side in the longitudinal axis direction (fig. 1, grip 102; [0024], [0028], [0035]-[0037]); a bending operation knob that is disposed on one side surface of the operation part main body (figs. 1 and 3A, knobs 64a and 64b; [0020]-[0021]); a universal cable connection portion that is provided on the other side surface of the operation part main body, the other side surface being provided opposite to the one side surface (figs. 3A-B and 4A-B, universal cord 16; [0028]-[0029]); and an operation switch that is provided within a range reachable by a thumb of an operator who grips the grip portion and that is housed in a housing recess of a switch disposition surface which is located in the operation part main body and between the one side surface and the other side surface (figs. 1 and 4A-B, switch 44; [0050]-[0052]; figs. 5A-5B, storage chamber 202 with groove 204; [0037]-[0039]), the operation switch being configured to swing in the longitudinal axis direction, wherein, in a case where the endoscope operation part is viewed from a side facing the switch disposition surface (figs. 3A-B and 4A-B, directions alpha, beta and gamma; [0040]), a position of a top portion of the operation switch in the longitudinal axis direction is located on the other side with respect to a center position of the universal cable connection portion in a state in which the operation switch is not operated (fig. 3A, switch 44, universal cord 16).
Hoshino does not teach wherein the housing recess is formed to have a shape in which an outer opening of the housing recess is wider than an inner bottom of the housing recess.
Koitabashi, in the same field of endeavor, discloses a switch (joystick, although a plurality of different control elements may be used as shown in figs. 10-13) that is disposed in a housing recess wherein the housing recess is formed to have a shape in which an outer opening of the housing recess is wider than an inner bottom of the housing recess (depression portion 87, figs. 4, 5, 10, 11). Koitabashi further discloses that the purpose of the recess is to allow the range of the switch (“working stroke”) to be increased to improve operation of the switch ([0122]).
It would have been prima facie obvious for one having ordinary skill in the art prior to the effective filing date to provide a tapered recess as taught by Koitabashi in order to increase the operating range (“working stroke”) of the switch.
Further regarding claim 1: Hoshino and Koitabashi further disclose wherein a first distance is from the switch disposition surface to the top portion of the operation switch and a second distance is a length of a portion of the operation switch housed in the housing recess (see at least figs. 5A-5B of Hoshino – the three-dimensional, physical switch of Hoshino and Koitabashi has dimensions comprising the described distances).
While Hoshino and Koitabashi are silent on the values or ratio of these two distances, it has been held by the courts 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. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). There is no evidence that the endoscope operation part of Hoshino and Koitabashi would perform differently than the claimed endoscope operation part having the claimed ratio between these two distances. Therefore, this cannot be a patentable distinction.
Regarding claim 2: Hoshino and Koitabashi disclose the endoscope operation part according to claim 1. Hoshino further discloses wherein the top portion of the operation switch is exposed to an outside of the housing recess in a state in which the operation switch is not operated (figs. 5A and 5B, placement/mounting portion 226).
Regarding claim 3: Hoshino and Koitabashi disclose the endoscope operation part according to claim 1. Hoshino further discloses wherein, in a case where the endoscope operation part is viewed from the side facing the switch disposition surface, the position of the top portion of the operation switch in the longitudinal axis direction is located on the other side with respect to a position where a rotation axis of the bending operation knob is provided, in a state in which the operation switch is not operated (figs. 3A-B and 4A-B).
Regarding claim 5: Hoshino and Koitabashi disclose the endoscope operation part according to claim 1. Hoshino further discloses wherein the top portion of the operation switch is configured to have an elongated shape extending in a direction orthogonal to the longitudinal axis direction (fig. 3A - portion 226 of switch 44 is rectangular in shape with the longer dimension orthogonal to the longitudinal axis).
Regarding claim 6: Hoshino and Koitabashi disclose the endoscope operation part according to claim 1. Hoshino further discloses wherein the operation part main body includes another switch provided on another switch disposition surface disposed on the other side with respect to the switch disposition surface (fig. 2 - switch 46 or switch 48).
Regarding claim 8: Hoshino and Koitabashi disclose the endoscope operation part according to claim 1. Hoshino further discloses wherein the operation switch is configured to be pushed in (fig. 3B, direction alpha; [0042]).
Regarding claim 9: Hoshino and Koitabashi disclose an endoscope comprising: the endoscope operation part according to claim 1 (Hoshino - fig. 1, operation unit 14); an insertion part that is connected to the one side of the grip portion and is to be inserted into a subject to be examined (Hoshino - fig. 1, insertion portion 12); and a universal cable that is connected to the universal cable connection portion (Hoshino - figs. 1-2, universal cord 16).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoshino and Koitabashi as applied to claim 1 above, and further in view of Nakamura et al. (US 2013/0012780 A1, Jan. 10, 2013) (hereinafter “Nakamura”).
Regarding claim 4: Hoshino and Koitabashi disclose the endoscope operation part according to claim 1, but do not disclose wherein the operation switch is disposed closer to the bending operation knob than to the universal cable connection portion.
Nakamura, in the same field of endeavor, discloses an endoscope operation part comprising a bending operation knob and a universal cable connection portion (fig. 4) with an operation switch which is disposed closer to the bending operation knob than to the universal cable connection portion (switch button 21, figs. 4-6; [0050]). Nakamura further discloses that positioning a frequently used switch button near the operating knobs facilitates use of the switch button ([0036], [0070], [0081]).
It would have been prima facie obvious for one having ordinary skill in the art prior to the effective filing date of the claimed invention to modify the endoscope operation part of Hoshino and Koitabashi by positioning the operation switch closer to the bending operation knob than to the universal cable connection portion as taught by Nakamura in order to facilitate the use of the operation switch to perform a frequently used function in view of the further teachings of Nakamura.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoshino and Koitabashi as applied to claim 1 above and further in view of Kuramoto (US 2016/0006993 A1, Jan. 7, 2016) (hereinafter “Kuramoto”).
Regarding claim 7: Hoshino and Koitabashi disclose the endoscope operation part according to claim 1, including that switch (44) may have one or several different well-known functions ([0017], [0036], [0044]). However, Hoshino is silent on one of those functions being a zoom operation switch for performing an operation to change a display magnification of an observation image acquired by an endoscope.
Kuramoto, in the same field of endeavor, discloses an endoscope with a zoom operation switch for performing a zoom operation to change a display magnification of an observation image acquired by the endoscope (zoom operation section 22c; [0041], [0049], [0077]).
It would have been prima facie obvious for one having ordinary skill in the art prior to the effective filing date of the claimed invention to provide the operation switch of Hoshino and Koitabashi with a zoom operation function to perform a zoom operation to change a display magnification of an observation image acquired by the endoscope as taught by Kuramoto in order to allow the user to zoom in on a potential lesion, thereby potentially improving patient outcome, in view of the teachings of Kuramoto ([0077]).
Response to Arguments
Applicant’s arguments with respect to prior art rejection of claims 1-9, filed 03/09/2026 have been fully considered but are moot in view of the updated grounds of rejection necessitated by amendment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROLYN A PEHLKE whose telephone number is (571)270-3484. The examiner can normally be reached 9:00am - 5:00pm (Central Time), Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Koharski can be reached at (571) 272-7230. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CAROLYN A PEHLKE/Primary Examiner, Art Unit 3799
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