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
In response to the Election/Restriction mailed to applicant on 05/21/2026, applicant has made an election of Invention II in the reply filed on 07/06/2026. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
As a result of applicant’s election, claims 1, 5-10 and 13 are examined in the present office action, and claims 2-4 and 11-12 have been withdrawn from further consideration as being directed to a non-elected Invention.
Applicant should note that the non-elected claims 2-4 and 11 will be rejoined if the linking claim 1 is later found as an allowable claim. Claim 12 will be rejoined if the claim has all features of the claim 1 and the claim 1 is later found as an allowable claim.
Drawings
The drawings contain eleven sheets of figures 1-12 were received on 05/09/2024. These drawings are approved by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The Summary of the Invention is objected to because it contains section regarding to prior art, see paragraph [0004], for example. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation is an optical system” as recited in each of claims 1 and 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
10. 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.
11. Claims 1, 5-10 and 13 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.
a) Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a1) the feature thereof “a tubular holding frame … to extend in an optical axis direction” (lines 3-4) makes the claim indefinite because it is unclear what applicant mean by a tubular holding frame extend in an optical axis direction. Does applicant intend to mean --to extend along an optical axis--?
a2) what element/system, i.e., the imaging device or the optical system or the tubular holding frame, has the so-called “an optical axis direction”? Applicant is respectfully invited to review the claimed language thereof “a substrate having a winding portion configured to extend in a circumferent direction” on lines 7-8 of the claim; and
a3) the feature thereof “a straight portion configured to extend from the winding portion to one side in the optical axis direction” (lines 8-10) makes the claim indefinite because it is unclear what applicant mean by “one side in the optical axis direction”. What does applicant mean “one side in the optical axis direction” (Lines 9-10)?
b) Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reasons set forth in elements a1) and a2) above.
c) Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the outside” (line 5) lacks a proper antecedent basis.
d) Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “wherein, when seen in … circumferential direction” (lines 1-3).
The mentioned feature makes the claim indefinite due to the use of term “when” in the mentioned feature. Applicant should note that the term “when” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
e) Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
e1) the claim is rejected because the feature thereof “the conductive portions” (line 2) lacks a proper antecedent basis; and
e2) the similar reason as set forth in element d) above.
f) Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reasons as set forth in elements set forth in element a) above.
g) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Allowable Subject Matter
12. Claims 1, 5-10 and 13 would be allowable if rewritten/amended to overcome the rejections of the claims under35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph as set forth in the present office action. It is also suggested that applicant should review each of claims 2-4 and 11-12 and make any suitable amendment to those claims because the claims 2-4 and 11-12 will be rejoined when the claim 1 is amended to overcome the rejections of the claims under35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph and claim 12 has all features of the amended claim 1.
13. The following is a statement of reasons for the indication of allowable subject matter:
The endoscopic imaging device as recited in the independent claim 1 and the method for manufacturing the endoscopic imaging device as recited in the independent claim 13 each is allowable with respect to the prior art, in particular, the Japanese reference Nos. JP 2017-63845 and JP 2023-150240 and the Chinese reference No. CN 113365541 by the limitations regarding the structure of the electronic component and the substrate, the holding frame and their structural arrangement as recited in the features thereof “an electronic component … winding portion” (claim 1 on lines 5-14” or “a tubular holding frame … the winding portion” (claim 13 on lines 2-16)
Conclusion
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
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, STEPHONE B. ALLEN can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
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