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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 19th, 2026 has been entered. Claims 1-6 remain pending in the application. Applicant’s amendments to the Claims have overcome the objection set forth in the Final Rejection mailed March 20th, 2026.
Response to Arguments
Applicant's arguments filed August 19th, 2026 have been fully considered but they are not persuasive. The applicant amends claim 1 with the limitation “wherein a height of the third surface along the injection direction is shorter than a height of the second surface along the injection direction”. The examiner applies the original 35 U.S.C 102 reference (Otawara) from claim 1 to reject this amended claim, as the height relationship between the third and second surface is found to be obvious in reference to Otawara’s disclosure as detailed in the 35 U.S.C. 103 rejection below.
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 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, 2, 3, 4, and 6 are rejected under 35 U.S.C. 103 as being anticipated by Otawara (US 2008/0064928, hereinafter “Otawara”). Regarding claim 1, Otawara teaches an endoscope comprising:
An insertion part that is inserted into a subject (Figure 1 component 11)
A first surface that is disposed on a distal end surface of the insertion part (Figure 4 component 24)
A forceps port that is disposed on the first surface (Figure 4 component 26)
A second surface that protrudes from the first surface along an insertion direction of the insertion part (Figure 4 the surface under component 31a)
An observation window that is disposed on the second surface (Figure 4 component 31a)
A nozzle that is disposed on the first surface and that jets a fluid from a jetting port toward the observation (Figure 4 component 60)
A third surface that protrudes from the first surface along the insertion direction of the insertion part (Figure 2+4 the surface under component 25b)
A first illumination window (Figure 4 25b) that is disposed on the third surface, wherein the third surface is located between the nozzle and the forceps port, and an end portion of the third surface in a jetting direction of the fluid is located further in the jetting direction than a formation position of the jetting direction is. (As seen in the attached image below, the two arrows forming a right angle show that the end portion of the third surface is further in the jetting direction than the formation position of the jetting direction, and the singular arrow shows that the surface is in between the nozzle and forceps port.)
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Otawara fails to explicitly disclose wherein a height of the third surface in the injection direction is shorter than the height of the second surface in the injection direction.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to set the height of the third surface to be shorter than the height of the second surface since it has been held 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” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the third and second surface configuration would not operate differently with the claimed height relationship. Further, Applicant places no criticality on the range claimed, indicating that, in paragraph 35 of the applicant’s specification, “the height relationship between the third surface 25 and the second surface 23 is not necessarily limited in carrying out the present invention, and, for example, the third surface 25 and the second surface 23 may have the same height”, showing that the specific height relationship is not required for the device to work as claimed.
Regarding claim 2, Otawara further teaches the endoscope according to claim 1, wherein the third surface (region under component 25b in figure 4) comprises a protruding region including the end portion and extending in the jetting direction between a formation position of the first illumination window and the nozzle. (In the image below, the protruding region is shown by the arrow, and the stars are the formation positions of the illumination window and nozzle.)
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Regarding claim 3, Otawara further teaches the endoscope according to claim 1, wherein the third surface (region under component 25b in figure 4) is tapered toward the end portion in the jetting direction along the nozzle from an outer periphery of the third surface which follows an outer peripihery of the distal end surface (in the image below, both arrows depict the taper beginning from the outer periphery and ending between the points of the arrows).
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Regarding claim 4, Otawara further teaches the endoscope according to claim 1, wherein a ridge line of the third surface on a side of the nozzle extends along the nozzle (edge of region under 25b closest to the nozzle. The rectangle in the image below outlines the ridge line of the third surface and its extension along the edge of the nozzle).
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Regarding claim 6, Otawara further teaches the endoscope according to claim 1, further comprising: a narrow portion formed by the second surface and the third surface (distance between the two closest points on the regions below 25b and 31a. The two arrows in the image on the left below outline this narrow portion between the two surfaces.) wherein a width of the narrow portion, which is a shortest distance between the second surface and the third surface in the narrow portion (as shown by the lower arrow in the image on the right below), is shorter than a shortest distance between the jetting port and the second surface (as shown by the upper arrow in the image on the right below).
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Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Otawara in view of Fukuzawa et al (U.S. Patent Application Publication 2021/0369089, hereinafter “Fukuzawa”).
In regards to claim 5, Otawara teaches the endoscope of claim 1 however, Otawara does not teach that a second illumination window is disposed on the second surface on a side opposite to the nozzle with the observation window interposed therebetween.
Fukuzawa teaches an endoscope wherein a second illumination window (figure 2 element 46a) is disposed on the second surface (figure 2 surface 72b) on a side opposite to the nozzle (figure 3 nozzle 48) with the observation window (figure 3 element 44) interposed therebetween.
It would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to modify the endoscope of Otwara with the second illumination window orientation in relation to the observation window and nozzle in order to ensure that the nozzle cleans both the observation window and second illumination window of the endoscope with one stream (the cleaning fluid deflects off the observation window onto the illumination window). This enhances the visibility capability of the device, as the view of the target region of the patient is enhanced, improving the diagnosis ability of the surgeon.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAYTON BARKER whose telephone number is (571)272-0912. The examiner can normally be reached 9:00 – 5:00 Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Carey can be reached at 5712707235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAYTON HYUN JIN BARKER/Patent Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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