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 .
This Office Action is in response to the amendments dated May 26, 2026.
Claims 2-5, 7-20, and 22-27 are pending.
Claims 9-10, 20, and 22-27 were previously withdrawn.
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.
Claims 2-5, 8, 11-12, and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (US 2020/0367737) in view of Adams (US 2006/0020165).
Regarding Claim 2, Matsumoto discloses:
An apparatus for cleaning a surgical scope (the Examiner notes that several disclosed examples read on the claims; for simplicity reference is made to Figs. 7-10), the apparatus comprising:
a sheath (120 or 220) for removably receiving a tube of the surgical scope (see Figs. 7-8 and 9-11 with the tube removed and inserted into the sheath), the sheath comprising: a wall (122 or 223) defining a channel for receiving the tube (see Figs. 8 and 11 showing the reception of the tube within the sheath), where a distal portion of the wall is configured to extend only partially around a circumference of the tube (see Figs. 8 and 11 showing the shape of the wall being such that the wall does not extend around the distal portion of the tube),
a first conduit (124 or 224) that defines a liquid flow path (Paragraphs 0047 and 0063; conduit 124/224 connects to water supply 40), and
a second conduit (126 or 226) that defines a gas flow path (Paragraphs 0047 and 0063; conduit 126/226 connects to gas supply 42); and
at least one nozzle (134 or 234) located at a distal end of the distal portion of the wall and configured for directing a flow of liquid from the first conduit across a lens of the surgical scope and directing a flow of gas from the second conduit across the lens of the surgical scope to clear the liquid from the lens (see Figs. 8 and 11 showing the flow across the scope).
Matsumoto does not explicitly disclose a receiver located at a proximal end of the sheath for receiving a housing of the surgical scope, wherein the receiver is configured to receive the housing in a predetermined angular orientation. Adams teaches having a receiver at the proximal end of a sheath for receiving an endoscope in a predetermined angular orientation (see Figs. 1-2, receiver 18 includes yoke 42 for securing a light post of an endoscope to prevent rotation of the shaft, see Paragraph 0021). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Matsumoto’s sheath to include Adams’ receiver. Such a modification provides a means for securely holding the endoscope in the sheath so that it does not rotate relative to the sheath.
Regarding Claim 3, Matsumoto as modified further discloses wherein the distal portion of the wall is configured for positioning in a trocar during use (functional language; the distal end can fit within a trocar in that trocars are cylindrical and the wall is cylindrical; nothing prevents such a use).
Regarding Claim 4, Matsumoto as modified further discloses a first port for connecting a liquid supply line to the first conduit and a second port for connecting a gas supply line to the second conduit (see Figs. 7 and 8 showing that 124/126 connect to supply lines 128/130 and 44/46; where they connect is considered to be a port; see also Paragraph 0068 discussing connecting conduits 224/226 in a similar manner).
Regarding Claim 5, Matsumoto as modified further discloses wherein the liquid flow path from the first port to the first nozzle and the gas flow path from the second port to the second nozzle are valve-free (the reference does not mention valves and no valves are shown).
Regarding Claim 8, Matsumoto as modified further discloses wherein only the distal portion of the wall is positioned in the trocar during use (functional language; the distal end can fit within a trocar while the proximal end remains outside the trocar).
Regarding Claim 11, Matsumoto as modified further discloses wherein the first conduit is adjacent to the second conduit (see Figs. 7-11 showing the conduits 124/126 and 224/226 next to one another).
Regarding Claim 12, Matsumoto as modified further discloses wherein the at least one nozzle is a first nozzle that is adjacent to a second nozzle (see Fig. 10 showing 234 with two distal areas to change the direction of the fluid going through 224 and 226; see Paragraph 0068).
Regarding Claim 15, Matsumoto as modified further discloses wherein the at least one nozzle is located for cleaning the surgical scope while the surgical scope views a surgical field (see Abstract and Paragraph 0012).
Regarding Claim 16, Matsumoto as modified further discloses wherein the at least one nozzle is located so that a field of view of the surgical scope is unobstructed (shown in Fig. 11 with the nozzle outside the perimeter of the scope; see also Figs. 5-6 and all other cross-sectional views showing the nozzle is not in front of the scope; the scope and its field of view are not part of the claimed structure; the Examiner also notes that Matsumoto’s configuration is substantially similar to Applicant’s with the nozzle located outside the perimeter of the scope).
Regarding Claim 17, Matsumoto as modified further discloses wherein the at least one nozzle is located at a distal end of the sheath (see Figs. 7-11 showing the nozzle at the distal end of the sheath).
Regarding Claim 18, Matsumoto as modified further discloses wherein at least the sheath is made of a plastic (Paragraphs 0062 and 0066 indicate that the sheaths are made of plastic).
Regarding Claim 19, Matsumoto as modified further discloses wherein the apparatus is disposable (the sheath is made from plastic and can be thrown away; see Paragraph 0051).
Claims 2-5, 7-8, and 11-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kumagai et al. (US 2020/0015663) in view of Matsumoto et al. (US 2020/0367737) and Adams (US 2006/020165).
Regarding Claim 2, Kumagai discloses:
An apparatus for cleaning a surgical scope, the apparatus comprising:
a sheath (1) for removably receiving a tube of the surgical scope (2; see Fig. 1), the sheath comprising: a wall (6) defining a channel (11) for receiving the tube, where a distal portion of the wall is configured to extend only partially around a circumference of the tube (see Figs. 1 and 2A, for example),
a first conduit (9) that defines a liquid flow path (9 is a fluid channel), and
at least one nozzle (8) located at a distal end of the distal portion of the wall and configured for directing a flow of liquid from the first conduit across a lens of the surgical scope (see Fig. 2A showing the fluid jetting across the scope lens).
Kumagai does not explicitly disclose a second conduit that defines a gas flow path and directing a flow of gas from the second conduit across the lens of the surgical scope to clear the liquid from the lens (although Figs. 10A and 10B clearly envision multiple channel 9s). Matsumoto teaches using two conduits, one for liquid and one for gas, to wash the lens and then blow away the cleaning fluid after washing (see Fig. 2 (numerous examples are shown through the disclosure) showing the two conduits and Paragraph 0045 discussing using both liquid and gas to clean the lens). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kumagai’s apparatus to include Matsumoto’s second conduit. Such a modification provides a means to supply gas across the lens to blow away the cleaning fluid to clear the lens of an endoscope.
Kumagai does not explicitly disclose a receiver located at a proximal end of the sheath for receiving a housing of the surgical scope, wherein the receiver is configured to receive the housing in a predetermined angular orientation. Adams teaches having a receiver at the proximal end of a sheath for receiving an endoscope in a predetermined angular orientation (see Figs. 1-2, receiver 18 includes yoke 42 for securing a light post of an endoscope to prevent rotation of the shaft, see Paragraph 0021). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kumagai’s sheath to include Adams’ receiver. Such a modification provides a means for securely holding the endoscope in the sheath so that it does not rotate relative to the sheath.
Regarding Claim 3, Kumagai as modified further discloses wherein the distal portion of the wall is configured for positioning in a trocar during use (functional language; the distal end can fit within a trocar in that trocars are cylindrical and the wall is cylindrical; nothing prevents such a use).
Regarding Claim 4, Kumagai as modified further discloses a first port for connecting a liquid supply line to the first conduit and a second port for connecting a gas supply line to the second conduit (see Matsumoto Figs. 7 and 8 showing that 124/126 connect to supply lines 128/130 and 44/46; where they connect is considered to be a port; see also Paragraph 0068 discussing connecting conduits 224/226 in a similar manner).
Regarding Claim 5, Kumagai further discloses wherein the liquid flow path from the first port to the first nozzle and the gas flow path from the second port to the second nozzle are valve-free (the reference does not mention valves and no valves are shown; the only valve mentioned is related to the treatment tool insertion port and not the flow paths).
Regarding Claim 7, Kumagai as modified further discloses wherein a proximal portion of the wall is configured to extend completely around a circumference of the tube of the surgical scope (Kumagai – see Fig. 1 showing the proximal end surrounding the scope).
Regarding Claim 8, Kumagai as modified further discloses wherein only the distal portion of the wall is positioned in the trocar during use (functional language; the distal end can fit within a trocar while the proximal end remains outside the trocar).
Regarding Claim 11, Kumagai as modified further discloses wherein the first conduit is adjacent to the second conduit (see Matsumoto Figs. 7-11 showing the conduits 124/126 and 224/226 next to one another).
Regarding Claim 12, Kumagai as modified further discloses wherein the at least one nozzle is a first nozzle that is adjacent to a second nozzle (see Matsumoto Fig. 10 showing 234 with two distal areas to change the direction of the fluid going through 224 and 226; see Paragraph 0068). The Examiner also notes that it would be obvious to duplicate Kumagai’s nozzle 8 supplying one for each conduit. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kumagai’s device to include either two nozzles 8 or Matsumoto’s nozzle 234. In one instance it is merely duplicating a part to account for the second conduit. In the other, it is the simple substitution of one nozzle for another to account for the two conduits.
Regarding Claim 13, Kumagai as modified further discloses wherein the first and second conduits are formed into a thickness of the wall (see Figs. 2A-4 showing 9 in the wall of the sheath).
Regarding Claim 14, Kumagai does not explicitly disclose wherein the thickness of the wall is non-uniform around a circumference of at least a portion of the wall. Matsumoto teaches using a varying thickness for the sheath (see Fig. 13). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kumagai’s apparatus to have a varying thickness wall. Such a modification reduces the overall diameter of the sheath.
Regarding Claim 15, Kumagai as modified further discloses wherein the at least one nozzle is located for cleaning the surgical scope while the surgical scope views a surgical field (see Kumagai – Paragraph 0031)
Regarding Claim 16, Kumagai as modified further discloses wherein the at least one nozzle is located so that a field of view of the surgical scope is unobstructed (Kumagai – shown in Fig. 2A with the nozzle outside the perimeter of the scope; the scope and its field of view are not part of the claimed structure; the Examiner also notes that Kumagai’s configuration is substantially similar to Applicant’s with the nozzle located outside the perimeter of the scope).
Regarding Claim 17, Kumagai as modified further discloses wherein the at least one nozzle is located at a distal end of the sheath (see Kumagai – see Fig. 1 showing the nozzle at the distal end).
Regarding Claim 18, Kumagai does not explicitly disclose wherein at least the sheath is made of a plastic. Matsumoto teaches making such a sheath out of plastic (Paragraphs 0062 and 0066 indicate that the sheaths are made of plastic). Plastic is a well-known material in the medical arts. Therefore, it would have been obvious to a person having ordinary skill in the art to modify Kumagai’s sheath to be made of plastic. Such a modification incorporates a well-known material that is known to be cost-effective and disposable.
Regarding Claim 19, Kumagai as modified further discloses wherein the apparatus is disposable (the sheath can be separated from the scope and thrown away).
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 TIMOTHY JAY NEAL whose telephone number is (313)446-4878. The examiner can normally be reached Mon-Fri 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan Nguyen can be reached at (571)272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY J NEAL/ Primary Examiner, Art Unit 3795
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