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 .
Amendment
According to amendment filed 12/03/2024, claims 1-12, 14-20 have been amended, claim 13 has been canceled.
Specification
The disclosure is objected to because of the following informalities:
the word cannula is misspelled as “canula” in numerous locations in the specification (see for example, page 9, line 30, page 10, lines 1, 20,….).
Appropriate correction is required.
Drawings
At least figures 1-3 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated (as Applicant admitted in the background section and on page 5, line 6+). See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: cannulas (104) on page 28, line 3. 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. 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.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12, drawn to a multi-camera ophthalmic endoscope system comprises camera modules secured in respective cannula to allowing viewing of a retina and computer executes instructions and processes video stream. Classified in A61B1/00009, A61B3/14.
II. Claims 14-20, drawn to a method for real-time processing in detail including decoding each video images, for each input video stream, identifying and tracking feature points included in N of the sequence of input video stream, classified in A61B1/00193, A61B1/00194, G06T2207/30041.
Inventions II and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus/system in group I has separate utility such as use in the body and does not need the detail steps of “including decoding each video images, for each input video stream, identifying and tracking feature points included in N of the sequence of input video stream” as recited group II.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired separate status in the art in view of their different classification.
The invention has acquired a separate status in the art due to their recognized divergent subject matter.
The inventions require a different field of searches (e.g., searching in different groups and/or subgroups).
The invention has acquired a separate status in the art due to their unrelated subject matters.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Applicant’s representative, attorney Jeffery B. Power, on 06/01/2026 a provisional election was made without traverse to prosecute the invention of group I, claims 1-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-20 have been withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claims 1-12 are objected to because of the following informalities:
Claim 1 includes multiple periods such as “a.”, “b.”, “c.” “i.”, “ii.”, “iii.”
It is noted that according to MPEP 608.01(m), “Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995)”.
The term “canula” recited in claim 1, line 5, is misspelled.
Appropriate corrections are required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 1 recites limitation “a. at least two endoscope camera modules, each camera module configured to produce a wide field of view of a retina…
b. each canula for securing each of the endoscope camera modules to a sclera of the eye to allow viewing of the retina;…” in lines 2-6 which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The specification focuses on endoscope having a dual camera module comprising camera modules (104). The specification, page 28, lines 17-19, states “Fig. 12 Diagram of taking input video signals received from two or more endoscope camera modules (104) to create one or more video stream sent to a display such as a monitor”. However, the entire specification and the figures describes only two cannula (106) for two camera modules (104) – see figure 13. The specification does not provide a sufficient written descriptive requirement to support claimed limitation “at least two endoscope camera modules…., each canula for securing each of the endoscope camera modules to a sclera of the eye to allow viewing of the retina;” as recited in claim 1. (See also MPEP 2161.01).
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 1-12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “wide” in claim 1 (line 3), claim 4 (line 3), claim 5 (line 4) is a relative term which renders the claim indefinite. The term “wide” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “wide” could be undefined space, or indefinite degrees such as undefined number of circles.
Claim 1 (in lines 5,8-9,16), claim 2 (in line 2), claim 3 (in line 2), recites the limitation "the endoscope camera modules". There are insufficient antecedent basis for these limitations in the claims.
It is noted that claim 1, line 2, recites “at least two endoscope camera modules”. Thus, the limitation “the endoscope camera modules” recited subsequently does not necessarily refer to “at least two camera modules” recited in line 2 of claim 1.
Claim 1 (in lines 8-10, 15, 19), claim 6 (in line 2), claim 7 (in line 3), claim 8 (in lines 2-3), recites the limitation "the video stream”. There is insufficient antecedent basis for this limitation in the claims.
It is noted that “a video stream” recited in line 3 of claim 1 refers to “a video stream” provided by each camera module (“each camera module configured to produce a wide field of a viewer of a retina of an eye and provide a video stream of the retina;”. It is different from “the video stream from the camera modules” recited in lines 8-9 of claim 1. In addition, it is unclear whether “the video stream” recited subsequent to “the video stream from the camera modules” in lines 8-9, refers to “a video stream” (recited in line 3) provided by each camera module or “the video stream from the camera modules” recited in lines 8-9.
Claim 1 recites the limitation "the processing" in line 10. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "said aligned 3D stereo view video stream” in line 22 or “the 3D stereo stream” in line 23. There are insufficient antecedent basis for these limitations in the claim.
Claim 11 recites the limitation "the camera module" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the cameral module" in line 3. There is insufficient antecedent basis for this limitation in the claim.
It is also noted that claim 1 recites limitation “a canula for securing each of the endoscope camera modules to a sclera of the eye to allow viewing….” in lines 5-6 is being indefinite because the claim boundaries are unknown. It is unclear whether a cannula for securing both of endoscope camera modules or a separate cannula for securing an endoscope camera module.
Examiner’s Note:
It is further noted according to MPEP 2111.04, “Claim scope is not limit by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.”
In this case, claim language such as “configured to….”, “adapted to….” recited in claims 1, 3-4, 6-8, 11 could be considered as claim language that suggests or makes optional but does not require the functions/steps to be performed or does not limit a claim to a particular structure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Anderson et al. (US 20210093177) discloses tip camera systems and methods for vitreoretinal surgery comprises receiving images from two cameras, an endoscope with a camera at the tip camera is inserted into an eye, a processor executes instructions to process images from the two cameras and displays the images from the cameras concurrently on a display (see figures 3A-3B, 6-9).
Abt (US 20190388271) discloses auxiliary surgical field visualization system comprising processor (310) for receiving image/video from auxiliary camera 304 and primary camera 308; the processor executes instructions to process the received images for simultaneously display on a display 309; instruments (101, 102, 103) are inserted into the eye through respective trocar cannulas 104, 105, 106 into incisions in the sclera following a procedure using a trocar cannula system (see figures 3D-4, paragraphs 0035, 0055, 0077-0080).
Ouyang et al. (US 20220296090) discloses endoscopy/stereo colposcopy medical instrument (see also figure 12).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AN SON PHI HUYNH whose telephone number is (571)272-7295. The examiner can normally be reached 9:00 am-6:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANH TUAN T 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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/AN SON P HUYNH/Primary Examiner, Art Unit 2426
June 4, 2026
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