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 Invention I, claims 1-7, in the response of 12 May, 2026, is acknowledged.
Applicant argues that the two groups each require an imager arranged such that a portion of the raising base is in the predetermined three-dimensional area when the raising base is within its rotational range, and as such inventions I-II should be examined together.
The examiner disagrees. Invention I requires an imager configured to capture an image of a predetermined three-dimensional area, while invention II requires an imager configured to capture an image of an interior of a subject. In this aspect, the imager of Invention I is broader than that of invention II, as an imager configured to capture an image of an interior of a subject will also capture a predetermined three-dimensional area.
However, Invention I requires that the portion of the raising base is in the predetermined three-dimensional area, while invention II requires that the portion of the raising base is captured in the image. In this aspect, the imager of Invention I is narrower than that of invention II, as it requires the portion of the raising base be in a particular part of the image, rather than any part of the image.
As such, the applicant’s arguments are found to be unconvincing, and the restriction requirement is hereby made final. Claims 8-14 are withdrawn, and claims 1-7 are examined.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the predetermined three-dimensional area (claims 1 and 5-7) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The applicant’s specification discusses a “predetermined three-dimensional area”. The applicant’s specifications do not clarify if this is an area or a volume. As such, the specifications fail to provide proper antecedent basis for claimed subject matter.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
In regards to claims 1 and 5-7, the claims read “predetermined three-dimensional area” [claim 1 lines 3-4, 10-11, claim 4 lines 2-3, claim 6 lines 2-3, claim 7 lines 7-8, 14]. Here, it is unclear if the applicant is referring to an area or a volume. This is also the case in the applicant’s disclosure. Therefore, the claims are unclear. For the purposes of prosecution, it will be assumed that this refers to a volume.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-6 are rejected under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In regards to claim 4, the claim reads “The distal end portion according to claim 3, wherein a trajectory of the distal end of the raising base when the raising base is rotated in the predetermined rotational range crosses the predetermined three-dimensional area.” As the distal end of the raising base is already required to be in the three-dimensional area in claims 1-2, the trajectory thereof necessarily will. As such, this claim is not further limiting.
In regards to claim 5, the claim reads “The distal end portion according to claim 4, wherein a cross section of the predetermined three-dimensional area being cut along a plane orthogonal to an optical axis of the imager includes a circular arc passing through a first position, a second position, and a third position in order, and the second position is closer to the optical axis than each of the first position and the third position.”
As the three-dimensional area may be any subset of a volume imaged by the imager, a cross-section of such a shape may comprise such an arc. As such, this claim is not further limiting.
In regards to claim 6, the claim reads “The distal end portion according to claim 5, wherein the cross section of the predetermined three-dimensional area includes two circular arcs facing each other with the optical axis interposed, and the circular arc is one of the two circular arcs.”
As discussed hereinabove, the cross section of an arbitrary volume may also be arbitrary and contain such shapes. As such, this claim is not further limiting.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Morimoto et al. (US 20200015782).
In regards to Claim 1, Morimoto discloses a distal end portion for use with an endoscope, comprising:
an imager [“imaging system unit”, 44, Figs.2-3, para.69, 86] configured to capture an image of a predetermined three-dimensional area [such a volume may be captured]; and
a raising base [60, Figs.2-3, 7, para.77-78] configured to be rotatable in a predetermined rotational range [Figs.2-3, 5, 7, para.78: at least some subset of a total range over which the base is rotatable], the raising base configured to abut against a treatment tool to adjust a direction in which the treatment tool protrudes [para.78], wherein
the imager is arranged such that a portion of the raising base is in the predetermined three-dimensional area when the raising base is positioned anywhere within the predetermined rotation range [Fig.7: the “predetermined rotational range” may be defined in this fashion].
In regards to claim 2, Morimoto discloses the distal end portion according to claim 1, wherein the portion of the raising base is a distal end of the raising base [Figs.2-3, 5, 7: the visible portion is part of a distal end of the raising base].
In regards to claim 3, Morimoto discloses the distal end portion according to claim 1, wherein a distal end of the imager is arranged proximally relative to the distal end of the raising base [Figs.2-3, 5].
In regards to claim 4, Morimoto discloses the distal end portion according to claim 3, wherein a trajectory of the distal end of the raising base when the raising base is rotated in the predetermined rotational range crosses the predetermined three-dimensional area [As the distal end of the raising base is already required to be in the three-dimensional area in claims 1-2, the trajectory thereof necessarily will. Also see the related 112 (d) rejection hereinabove.].
In regards to claim 5, Morimoto discloses the distal end portion according to claim 4, wherein a cross section of the predetermined three-dimensional area being cut along a plane orthogonal to an optical axis of the imager includes a circular arc passing through a first position, a second position, and a third position in order, and the second position is closer to the optical axis than each of the first position and the third position [As the three-dimensional area may be any subset of a volume imaged by the imager, a cross-section of such a shape may comprise such an arc. Also see the related 112 (d) rejection hereinabove.].
In regards to claim 6, Morimoto discloses the distal end portion according to claim 5, wherein the cross section of the predetermined three-dimensional area includes two circular arcs facing each other with the optical axis interposed, and the circular arc is one of the two circular arcs. [As discussed hereinabove, the cross section of an arbitrary volume may also be arbitrary and contain such shapes. Also see the related 112 (d) rejection hereinabove.]
In regards to claim 7, Morimoto discloses an endoscope comprising:
an insertion portion that has a distal end portion provided at a distal end of the insertion portion, the insertion portion being configured to be inserted into a subject, wherein
the distal end portion comprises:
an imager [“imaging system unit”, 44, Figs.2-3, para.69, 86] configured to capture an image of a predetermined three-dimensional area [such a volume may be captured: see the related 112 (b) rejection hereinabove]; and
a raising base [60, Figs.2-3, 7, para.77-78] configured to be rotatable in a predetermined rotational range [Figs.2-3, 5, 7, para.78: at least some subset of a total range over which the base is rotatable], the raising base configured to abut against a treatment tool to adjust a direction in which the treatment tool protrudes [para.78], and
the imager is arranged such that a portion of the raising base is in the predetermined three-dimensional area when the raising base is positioned anywhere within the predetermined rotation range [Fig.7: the “predetermined rotational range” may be defined in this fashion].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON B FAIRCHILD whose telephone number is (571)270-5276. The examiner can normally be reached 8:30am-5pm Monday-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 (571) 270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AARON B FAIRCHILD/Primary Examiner, Art Unit 3795
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