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 in the response of 30 April, 2026 is acknowledged. Applicant has elected invention I (claims 1-10) and Species A (Fig.2), while inventions II (claims 11-15)-III (claims 16-20) and species B (Fig.3), C (Fig.4) and D (Fig.5) are nonelected. Applicant avers that claims 1-7 read on the elected invention and species.
First, Applicant has traversed the restriction of species on the basis that the independent claim is generic and that MPEP 821.04 requires examination of claims directed to additional species that depend from or require all the elements of an allowable subject claim [in the applicant’s arguments of 30 April, 2026, page 6].
The examiner disagrees. This is not actually an argument for traversal, though the applicant has labeled it in that fashion. It is an argument about rejoinder after finding of allowability. As such, the examiner finds this argument particularly and unusually unconvincing.
Second, Applicant has traversed the restriction of species on the basis that no specific statements of separateness have been provided distinguishing the species [in the applicant’s arguments of 30 April, 2026, page 7].
The examiner indicates that, for example, Species A and B respectively relate to turbidity sensors that are designed and operate differently. Species A (Fig.2) is an electrolytic conductivity sensor with a different design an operation than Species B (Fig.3) which induces a current in the medium and then measures it. Applicant’s Figs.2-5 are plainly drawn and described as different sensors of mutually exclusive types [see applicant’s para.31-36]. As such, the examiner finds this argument unconvincing.
Third, Applicant has traversed the election of inventions on the basis that there is no serious search burden for searching both inventions I and II, as a search for one would encompass some of the features of the other, and that the examiner did not classify these separately [in the applicant’s arguments of 30 April, 2026, page 7].
Examiner disagrees. The examiner classified these inventions separately (see the restriction requirement of 25 March, 2026). Further, separable inventions may be mutually exclusive while sharing some subject matter. As such, the examiner finds this argument particularly and unusually unconvincing.
Fourth, Applicant has traversed the election of inventions on the basis that Invention III recited operations corresponding to the functions performed by the processing circuitry of Invention I. As such, a search on Invention I would encompass some (“substantially encompass”) of the subject matter of group III [in the applicant’s arguments of 30 April, 2026, pages 7-8].
The examiner disagrees. Some overlapping subject matter is not a basis for traversal. As such, the examiner finds this argument unconvincing.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file. Accordingly, the benefit of foreign priority under 35 U.S.C. 119(a)-(d) is obtained.
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 second electrode spaced laterally apart and offset from the second electrode of claim 6 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 disclosure is objected to because of the following informalities:
Paragraph 65 reads “a second electrode spaced laterally apart and offset from the second electrode”. This is clearly a drafting error.
Appropriate correction is required.
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 6-7 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 claim 6, the claim reads “a second electrode spaced laterally apart and offset from the second electrode” [lines 3-4]. This could be understood to require that the second electrode is spaced apart from itself, which would require specification objections, drawing objections, and 101 rejections. This could also be understood to be an obvious drafting error, where this was intended to read instead “a second electrode spaced laterally apart and offset from the second electrode”. Therefore, the claim is unclear. For the purposes of prosecution, it will be assumed that the latter is the case.
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Watanabe et al. (US 2022/0287725).
In regards to Claim 1, Watanabe discloses a medical system capable of determining at least one of turbidity or surgical scene clarity, the medical system comprising:
one or more turbidity sensors [pH sensors, para.105] coupled to a flexible scope [21, Fig.13, para.105, all devices have some degree of flexibility]; and
processing circuitry [22, Fig.13, para.105], coupled to the one or more turbidity sensors [para.102], configured to:
obtain a signal from the one or more turbidity sensors [S4310, Fig.9a, para.105];
determine a level of turbidity of a solution at or near a distal tip of the flexible scope [S4312-4314, Fig.9a, para.105]; and
based on the determined level of turbidity, provide a signal to control suction [para.170] at or near the distal tip of the flexible scope [Fig.13, para.165, 170].
In regards to claim 2, Watanabe discloses the medical system of claim 1, wherein the processing circuitry is configured to determine the level of turbidity based at least in part on the signal from the one or more turbidity sensors and at least one of a correlation function or a lookup-table that correlates the signal from the one or more turbidity sensors to the level of turbidity [Fig.9a, para.105: This is mathematically indistinguishable from how the processor of Watanabe operates.].
In regards to claim 3, Watanabe discloses the medical system of claim 1, wherein the processing circuitry is configured to determine the level of turbidity based at least in part on the signal from the one or more turbidity sensors and at least one of a correlation function or a lookup-table that correlates the signal from the one or more turbidity sensors to the level of scene clarity [Fig.9a, para.105: This is mathematically indistinguishable from how the processor of Watanabe operates.].
In regards to claim 4, Watanabe discloses the medical system of claim 1, wherein a first turbidity sensor of the one or more turbidity sensors is located inside a lumen of the flexible scope [“The pH sensor provided in… the insertion unit 211 of the endoscope 21, Fig.13, para.102: By definition a space the pH sensor is provided in 211 would be a lumen.].
Claim Rejections - 35 USC § 103
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (US 2022/0287725).
In regards to claim 5, Watanabe discloses the medical system of claim 4, however does not positively disclose wherein a second turbidity sensor of the one or more turbidity sensors is located external to the lumen or the working channel of the flexible scope.
Watanabe further teaches wherein a turbidity sensor in the system may alternatively be provided external to the lumen of the flexible scope [para.102].
Therefore, it would have been obvious to one having ordinary skill in the art to modify the medical system of Watanabe to comprise a second turbidity sensor of the one or more turbidity sensors located external to the lumen of the flexible scope external to the endoscope. This would be done as Watanabe shows this is known in the art, and for the predictable results of providing a backup turbidity sensor and providing data from an alternative site.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (US 2022/0287725) in view of Ushizawa et al. (US 4,582,589).
In regards to claim 6, Watanabe discloses the medical system of claim 1, however does not positively disclose wherein the one or more turbidity sensors include:
a first electrode; and
a second electrode spaced laterally apart and offset from the second electrode;
wherein at least one of the first electrode or the second electrode are connected to a sensing circuit, the sensing circuit comprising at least one of a voltage sensor or a current sensor configured to detect and measure at least one of a voltage signal or a current signal generated between the first electrode and the second electrode.
Watanabe further discloses wherein the one or more turbidity sensors comprises a pH sensor [para.102, 105].
Ushizawa teaches a pH sensor [10, 23-24, Fig.2, abstract] comprising
a first electrode [10, Fig.2, col.3 ll.20-21]; and
a second electrode [23, Fig.2, col.3 ll.23-25] spaced laterally apart and offset from the second electrode [note the related 112 (b) rejection hereinabove: this is actually requiring it to be spaced apart from the first electrode];
wherein at least one of the first electrode or the second electrode are connected to a sensing circuit [24, Fig.2, col.3 ll.25-30], the sensing circuit comprising a voltage sensor configured to detect and measure a voltage signal between the first electrode and the second electrode [col.3 ll.25-30].
Therefore it would have been obvious to one having ordinary skill in the art to modify the turbidity sensor disclosed by Watanabe to have electrodes and a sensing circuit in accordance with the teachings of Ushizawa. This would be done as Ushizawa shows that it is known in the art.
The examiner notes that all of claim 6 is also part of the definition of a pH sensor.
In regards to claim 7, Watanabe in view of Ushizawa teaches the medical system of claim 6, wherein at least one of the first electrode or the second electrode are located inside a lumen or working channel of the flexible scope [Watanabe: “The pH sensor provided in… the insertion unit 211 of the endoscope 21, Fig.13, para.102: By definition a space the pH sensor is provided in 211 would be a lumen.].
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.
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, 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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