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 .
**THE PREVIOUS OFFICE ACTION (MAILED JUNE 18, 2026) IS REPLACED/SUPERSEDED BY THIS OFFICE ACTION.
Issuance of New Final Rejection
This Office action is a new Final rejection issued in response to applicant contacting the examiner to note that claims 21 and 22 (filed with the amendment of April 24, 2026) were not treated in the final Office action mailed June 18, 2026. This new final Office action is issued to correct that oversight and to restart the time period for response.
Response and Amendment Filed
Applicant’s response and amendment, filed April 24, 2026, have been entered and made of record.
Previously Set Forth Rejections
The status of the rejections set forth in the previous Office action (mailed January 30, 2026) are as follows:
The 35 USC 101 rejection of claims 1-15 is hereby overcome by amendments to claims 1-15.
The 35 USC 102(a)(2) rejection of claims 1-15 as being anticipated by Fuji et al. (U.S. Patent Application Publication No. 2024/0260811) is hereby withdrawn.
The following new grounds of rejection are set forth:
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, 2, 4-15, 21 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuji et al. (U.S. Patent Application Publication No. 2024/0260811).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
In regard to claims 1, 9, 10 and 22, Fuji et al. teach a medical system 10 comprised of a controller 100, an endoscope 210, a monitor 230, a generator 300 and a treatment tool 310 (see Fig. 2). The endoscope 210 includes an imaging device that captures endoscope images of the inside of the body cavity (see para. 0084). The controller 100 includes a processor 110, a memory 120, and two input/output (I/O) devices 180, 190 (see Fig. 3 and para. 0090). I/O device 180 receives an endoscope image from the endoscope system 200 and I/O device 180 is connected to the processor 110 (see Fig. 3). As shown in Figure 5, the endoscope image includes both the treatment tool 310 and the tissue to be treated. The memory 120 stores a program 210 that may include a trained model 122 obtained by machine learning, such as a neural network (see Fig. 5 and para. 0094). Figures 4 and 5 demonstrate how the endoscope image including the treatment tool is compared with the memory 120 and machine trained model to recognize the treatment tool and to recognize that the treatment tool is contacting tissue (e.g., tissue portion lifted by hook). The controller 100 also generates support information regarding a tension from the endoscope image and displays it on the monitor 230 (see para. 0089). Fuji et al. do not specifically state that the controller does not display the support information if the tension is not detected. However, this recitation is considered an intended use recitation that is given little patentable weight. Moreover, the structure recited by Fuji et al. does not include any structural limitations that would preclude its use in not displaying the support information if the tension is not detected. Thus, the device taught by Fuji et al. is capable of being used to not display the support information if the tension is not detected and one of ordinary skill in the art at the effective filing date of the invention would have been motivated to utilize the device in such a manner. Finally, it should be noted that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Also, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004).
In regard to claim 2, Figures 4 and 5 also demonstrate how a region of interest including the treatment tool is identified and set. In regard to claims 4, 14, 15 and 21, the controller 100 measures the tension applied to the treatment target tissue from the endoscope image and adjusts an output setting of the generator 300 in accordance with the measured tension (see paras. 0183-0186). In regard to claims 5-7, the determination section 114 determines whether or not the tension is appropriate based on a difference between a movement of the tissue in conjunction with the movement of the treatment tool (thus the movement is decomposes into components (see para. 0135). In regard to claims 8 and 11-13, the treatment tool 310 has an end effector 311 that applied energy to the tissue (see para. 0087) where the end effector 311 can be two jaws where the processor 110 determines if the jaws are open or closed or are gripping tissue (see paras. 0241-0243). Note that the processor also determines whether or not tissue is covering the end effector (see para. 0119).
Response to Arguments
Applicant's arguments filed April 24, 2026 have been fully considered but they are not persuasive.
Applicant argues that Fuji et al. do not disclose the last two paragraphs of claim 1, namely:
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However, as set forth above, upon reconsideration of the teachings of Fuji et al., it is the examiner’s position that the device taught by Fuji et al. is capable of being used to not display the support information if the tension is not detected and one of ordinary skill in the art at the effective filing date of the invention would have been motivated to utilize the device in such a manner.
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 BEVERLY MEINDL FLANAGAN whose telephone number is (571)272-4766. The examiner can normally be reached Mon-Fri 7:30AM to 5:00PM.
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, Joanne Rodden can be reached at (303) 297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BEVERLY M FLANAGAN/Primary Examiner, Art Unit 3794
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