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 .
Election/Restrictions
Applicant's election with traverse of the restriction and requirement for election of species in the reply filed on 11/04/2025 is acknowledged. The traversal is on the grounds that the species are not distinct and mutually exclusive (arguing that Species B, C, and D are subordinate to Species A). Upon reconsideration of the restriction requirement and requirement for election, the Examiner agrees in part as follows.
Species A (Figures 1-6) appears to be generic to each of species B (Fig 7), C (Fig 8), and D (Fig. 9-10). Between B, C, and D only B and C appear to be mutually exclusive, being different variants of the structure of the inner surface of the lens barrel intended to achieve different design goals: B reduces reflection on the inner surface of the barrel member (see ¶0068-0070) and C provides a stabilization function that reduces vibration of the lens barrel when it is subjected to ultrasonic cleaning (see ¶0080-0083). B and C appear to be mutually exclusive because B is drawn and described as having low-reflection treatments and structures formed along the entirety of the inner surface, including a structure 33 which is fit in the proximal region of the barrel inner surface (see ¶0071) but C is drawn and described as having the moving member 36 being movable all the way to the proximal end stopper (see ¶0080). Since D concerns details of the outer surface, the described features could be applied to any of the preceding lens barrels without apparent issue.
The examiner has also reconsidered the restriction requirement between Inventions I and II. While the inventions are separately classified and would be separately usable, the prior art indicates that as claimed a person having ordinary skill in the art before the time of filing would have considered Claim 15 obvious over claim 1. In short, an “image pickup unit for an endoscope” would have been obvious to use as part of an endoscope because the claim directly states that it is for an endoscope. The prior art (as applied and cited below) indicates that it is known to position the image pickup unit of a camera-equipped endoscope within the portion which is inserted into the subject (as is claimed in claim 15). Since there is not any indication in the claim of features which would preclude use of the camera in the latter type of endoscope (e.g. a mounting structure integrating the camera into equipment mounted on a rolling rack), said person would have considered claim 15 to be an obvious use of the device of claim 1.
The Requirement for Restriction/Election as set forth in the 09/19/2025 mailing is therefore withdrawn. Claims 1-15 are pending.
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.
Claims 1-4, 6, and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Iguchi et al (US Patent 10,739,548 B2) in view of Itou et al (JP 2000-089136 A, Foreign citation 3 in IDS dated 11/21/2023, English machine translation attached).
With regard to claims 1 and 15: Iguchi discloses an endoscope (shown in Figure 20) which comprises an insertion section 91 which is inserted into a subject, the insertion section including an image pickup unit 80 disposed within it (see column 14 lines 19-48). The image pickup unit of Iguchi is disclosed as having a first barrel having a first hardness in which a hole is formed (first stationary barrel 20, which is best seen in Figure 5 as having openings on each end and a hollow central area and which is disclosed in column 5 lines 31-34 as being formed of stainless steel due to being part of group 2 shown in Figure 1) and a second barrel having a second hardness (movable member 3 which is formed of stainless steel per column 7 lines 4-5) and in which an optical member is internally provided(first movable lens Lv1 which is part of movable lens group Gv, see column 6 lines 49-55), the second barrel being held in the hole of the first barrel to be movable relative to the first barrel (see column 8 line 43 through column 9 line 3). In Iguchi the second barrel has a magnet 12, composed of two sets of magnets 12a and 12b which are composed of magnetic material (as disclosed they appear to be permanent magnets and not electromagnets) and the first barrel has a coil 11 which is configured to generate a magnetic field that acts on the magnet such that the second barrel slides in the first barrel according to the energization of the coil (as disclosed in column 8 line 43 through column 9 line 3).
Iguchi does not teach that either of an inner surface of the hole or an outer surface of the second barrel are provided with a film having a third hardness lower than the first hardness and the second hardness, configured to slide with another of the hole and the outer surface of the second barrel. No film is disclosed as being present on either surface.
Itou teaches that the sliding properties of two relatively sliding parts within an endoscope camera unit can be enhanced by providing one with a lower hardness film coating, specifically suggesting use of a fluororesin coating in ¶0052-0053. Such treatment results in a better sliding performance and longer lifespan for the module (see ¶0057-0058).
It would have been obvious to a person having ordinary skill in the art before the time of filing to have configured the image pickup unit within the endoscope of Iguchi to have the film arrangement of Itou in order to improve the sliding performance and lifespan of the system.
With regard to claims 2, 3, and 6: The image pickup unit of Iguchi is formed using stainless steel as the material for the first and second barrels, and fluororesin as the material of the film. Applicant’s disclosure indicates that stainless steel and fluororesin have Vickers hardnesses meeting the claimed relationship (see ¶0039-0041 indicating that stainless steel has a hardness of 180 HV or more and the fluororesin has a hardness of approximately 50HV). Since the composition of the barrels and film of Iguchi are physically the same as those disclosed by applicant the elements of Iguchi must have the same properties (see MPEP 2112.01 I and II) and also meet the claimed relationship.
With regard to claim 4: The first and second barrels of Iguchi are disclosed as both being formed of stainless steel, and thus the first hardness is the same as the second hardness.
With regard to claim 11: as can be seen in the cross section of Iguchi Figure 4 (which is along the line III in Figure 2, showing a cross section passing through the sliding contact surfaces between the first and second barrels) the outer surface of the second barrel on which the film is formed in the combination is further on an outer side than a radius of the optical member centering on an optical axis of the optical member The optical member is contained entirely within the second barrel, with an outer radius retained by inner peripheral portion 32b of the second lens barrel per column 6 lines 49-55.
With regard to claim 13: The image pickup unit of Iguchi is disclosed as having the optical member disposed inside a second hole formed in the second barrel (the second barrel is hollow inside, as can be best seen in Figure 8 and the optical member is disposed in mounting surface 32b of the second member). Further the image pickup unit of Iguchi has an assembled structure in which an annular member (rear frame portion 5, which has a hollow cylindrical structure holding lens elements Lb1 and Lb2) is disposed inside of the second hole of the second member (best seen in Figure 4 the portion of 5 which holds the lens elements extends inside the inner periphery of element 31, with outer periphery face 51a arranged to oppose inner periphery face 32c as described in column 6 line 56 through column 7 line 3). This results in a configuration in which the annular member 5 is movable relative to the optical member along the optical axis of the optical member, due to the optical member being movable relative to 5 under action of the coil and magnet drive system. The examiner notes that the claim as written only requires that the “annular member” be “disposed inside” of the second hole, but does not require that the second member be retained in the hole or contact the inner surface of the second hole.
With regard to claim 14: The image pickup unit of Iguchi is formed such that the outer surface of the second barrel includes a flat shape section. A plurality of flat shape sections are present in the outer surface of the second barrel, as can be best seen in Figure 7 (flat portions include 31d, 31e, and 31f). These flat shaped sections are configured such that when the unit is assembled a gap between the flat shape sections and an inner surface of the hole is larger than a gap between the outer surface of the second barrel other than the flat shape section (at sliding surfaces 31c) and the inner surface of the hole. This can be best seen by comparing Figure 2 (which is a cross section passing through the flat-shaped portions) and Figure 3 (which is a cross section passing through the sliding surfaces).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Iguchi and Itou in further view of Lee (KR 101086847 B1, English machine translation attached).
With regard to claim 7: Itou teaches the use of different compositions for the lubricating film but only gives fluororesin, molybdenum, or a combination of the two as examples and thus does not suggest the use of boron or a boron compound as part of the film.
Lee teaches that composing a coating film for a sliding member out of a combination of an adhesive, a filler, and a solid lubricant such a hexagonal Boron Nitride results in a coating which is simultaneously resistant to abrasion, is not tacky, has heat resistance, and possesses lubricity (see the marked paragraphs in the attached machine translation).
A person having ordinary skill in the art before the time of filing would have found it obvious to have used the coating composition of Lee, including to use hexagonal boron nitride solid lubricant, in order to attain a coating which is simultaneously resistant to abrasion and heat, while retaining lubricating properties and without presenting a tacky surface.
Claims 1-5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Iguchi in view of Takagi et al (“Lubrication of Bearing Steels With Electroplated Gold Under Heavy Loads”, Air Force Materials Laboratory Technical Report AFML-TR-67-61, March 1967)
With regard to claims 1-5 and 10: Iguchi discloses an endoscope (shown in Figure 20) which comprises an insertion section 91 which is inserted into a subject, the insertion section including an image pickup unit 80 disposed within it (see column 14 lines 19-48). The image pickup unit of Iguchi is disclosed as having a first barrel having a first hardness in which a hole is formed (first stationary barrel 20, which is best seen in Figure 5 as having openings on each end and a hollow central area and which is disclosed in column 5 lines 31-34 as being formed of stainless steel due to being part of group 2 shown in Figure 1) and a second barrel having a second hardness (movable member 3 which is formed of stainless steel per column 7 lines 4-5) and in which an optical member is internally provided(first movable lens Lv1 which is part of movable lens group Gv, see column 6 lines 49-55), the second barrel being held in the hole of the first barrel to be movable relative to the first barrel (see column 8 line 43 through column 9 line 3). In Iguchi the second barrel has a magnet 12, composed of two sets of magnets 12a and 12b which are composed of magnetic material (as disclosed they appear to be permanent magnets and not electromagnets) and the first barrel has a coil 11 which is configured to generate a magnetic field that acts on the magnet such that the second barrel slides in the first barrel according to the energization of the coil (as disclosed in column 8 line 43 through column 9 line 3).
Iguchi does not teach that either of an inner surface of the hole or an outer surface of the second barrel are provided with a film having a third hardness lower than the first hardness and the second hardness, configured to slide with another of the hole and the outer surface of the second barrel. No film is disclosed as being present on either surface so Iguchi further does not teach that the film is formed of a metal material with a noble metal as a main component and having Vickers hardness of an order of magnitude less than the first and second hardnesses, half or less of the Vickers hardness of the first or second hardnesses, a Vickers hardness of 90HV or lower, or that the thickness of the film is 0.1um or more and 10um or less.
Takagi teaches that the lifespan of two relatively sliding parts within an enhanced by providing one with a lower hardness film coating, specifically suggesting use of a film of gold plated onto the steel substrate. Takagi includes data which appears to indicate that such gold films applied to a stainless substrate and subjected to a stainless wearing surface are effective between 0.1µm and 10µm, with an apparent peak lifespan at roughly 1-2µm (see Table VII, which shows peeling failure at 20µm when gold plating is applied to a 440C race and subjected to a 440C block).
It would have been obvious to a person having ordinary skill in the art before the time of filing to have configured the image pickup unit within the endoscope of Iguchi to have the film arrangement of Takagi in order to improve the lifespan of the sliding interface between the two parts. Said person would have found the claimed thickness range obvious as it matches the range of thicknesses which Takagi indicates are effective at prolonging the lifespan of the interface while also preventing pealing of the coating.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Iguchi and Takagi as applied to claims 1-5 and 10 above in further view of Garvey (US Patent 3,645,861).
With regard to claims 8-9: the combination as applied to claims 1-5 and 10 above does not include an intermediary material layer for bonding the gold film to the base material (the stainless steel of either the hole of the first barrel or the outer surface of the second barrel), and thus does further does not disclose use of nickel as such an intermediary material.
Garvey teaches that forming an intermediary nickel layer between a stainless-steel substrate and a plated metallic film results in “greatly improved adherence” of the gold, see Abstract and column 1 lines 59-73 (with line 68 indicating that the method of Garvey may be used to promote adherence of gold to stainless steels).
A person having ordinary skill in the art before the time of filing would have found it obvious to use a nickel intermediary layer as taught by Garvey between the stainless steel base metal of Iguchi and the gold lubrication layer of Takagi in order to improve the adhesion of the plated gold to the stainless steel (particularly as Takagi indicates that one of the primary failure modes of the gold lubricating film is that it peels away from the base metal).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Iguchi and Takagi as applied to claims 1-5 and 10 above in further view of Ogi (US Patent 11,774,742 B2).
With regard to claim 12: The optical member of Takagi is disposed inside a second hole formed in the second barrel (the second barrel is hollow inside, as can be best seen in Figure 8 and the optical member is disposed in mounting surface 32b of the second member).
Iguchi does not teach the inclusion of a low reflection member fixed to an inner surface of the second hole and heaving a reflectance of light lower than reflectance of the film.
Ogi teaches that the surfaces which face the regions through which light passes in an endoscope image pickup module should be supplied with light reflection preventing surfaces in order to prevent the occurrence of flare (see column 17 line 65 through column 18 line 3).
It would have been obvious to a person having ordinary skill in the art before the time of filing to have included a low reflection member (such as a black coating or surface with a blackening treatment) fixed to an inner surface of the second hole in order to reduce the occurrence of flare in the imaging system, resulting in a structure with meets the claimed limitations (as gold has significant reflectivity and cannot be reasonably considered to be less reflective than a “black” surface which is intended to prevent light reflection).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Leon W Rhodes Jr whose telephone number is (571)270-5774. The examiner can normally be reached M-F 9:00AM - 6:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Walter Lindsay can be reached at (571) 272-1674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEON W RHODES, JR/Examiner, Art Unit 2852