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
Claim 20 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claim 20 includes - “wherein the proximally extending portion of the circuit board extends through at least a portion of the shaft, and wherein the proximally extending circuit board includes a plurality of windings within a distal portion of the shaft that is adjacent to the distal tip.” This feature of the circuit board (extending circuit board windings that are adjacent to the distal portion; FIG. 4A) was not recited earlier. Earlier claims only recite extending circuit board windings. The positioning of the windings at the distal end makes medical device of claim 20 distinct sub-combination from the medical device of claim 16 or from the previously presented claim 20, which claims only circuit board extending into the handle.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, currently presented claims 20, 25 have been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added 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.
Response to Amendment
The amendment filed on 03/31/2026 has been entered. Claims 1, 3, 5, 9-25, are pending. Claims 2, 4, 6-8, are cancelled. Claims 20, 25 have been withdrawn from consideration.
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.
Claim(s) 1, 3, 9-10, 22, is/are rejected under 35 U.S.C. 102 as being anticipated by Smith (US11153970).
Regarding claim 1, Smith discloses electronic assembly for a medical device (FIG. 4, annotated), the assembly including:
a circuit board including a body (Circuit board 100);
an imaging device mounted on an edge of a distal end (first electronic component 200a is a camera; FIG. 4; col. 8, lines 1-10) of the body of the circuit board;
a first arm (FIG. 4, annotated) extending from the body, wherein a first lighting element (LED 200b) is mounted on a first edge of the first arm, such that the first lighting element is adjacent to a first side of the imaging device; and
a second arm (FIG. 4, annotated) extending from the body, wherein a second lighting element (LED 200c) is mounted on a second edge of the second arm such that the second lighting element is adjacent to a second side of the imaging device, wherein the second side is perpendicular to the first side (First side and second side of the imaging device, camera 200a, can be chosen in FIG. 4 such that they are perpendicular to each other. See FIG. 4, annotated).
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Regarding claim 3, Smith discloses wherein contacts of the first lighting element are oriented approximately perpendicularly to contacts of the second lighting element (Vertical line through the component 200b is oriented approximately perpendicularly to the horizontal face of the electronic components 200c; Claim does not provide a reference for the orientation).
Regarding claim 9, Smith discloses medical device including the electronic assembly of claim 1, wherein the medical device includes:
a handle (FIG.8; Since the apparatus of printed circuit board 100, is used as endoscope, col 10, lines 7-18, a handle would be there.);
a distal tip (FIG. 4), wherein the imaging device, the first lighting element, and the second lighting element are disposed within the distal tip (FIG. 4); and
a shaft (FIG. 8) connecting the handle to the distal tip, wherein the circuit board includes a proximally extending portion that extends through at least a portion of the shaft (FIGS. 4, 8).
Regarding claim 10, Smith discloses wherein the proximally extending portion extends into the handle of the medical device (The proximally extending portion is configured to extend into the handle; FIGS. 8, 20).
Regarding claim 22, Smith discloses wherein the second arm includes at least three bends (Considering bends in X, Y, and Z direction, there are at least three bends with the arm.).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 16-17, 18-19, 23, is/are rejected under 35 U.S.C. 103 unpatentable over Smith (US11153970) in view of Ulmschneider (US 20200397232).
Regarding claim 16, Smith discloses a medical device (FIG. 4), including: a handle (FIG. 8);
a shaft extending from the handle to the distal tip (FIGS. 4, 8, 9); and
an electronic assembly (FIG. 4) including:
a distal portion (FIGS. 4, 10) disposed within the distal tip of the shaft of the medical device;
at least one component mounted on a circuit board (circuit board 100) of the distal portion (first electronic component 200a is a camera; FIG. 4; col. 8, lines 1-10); and
a proximally extending portion (FIG. 4, annotated) disposed within the shaft of the medical device, wherein the proximally extending portion includes a circuit board, wherein the circuit board extends into the handle (Circuit board 100; FIGS. 4, 8-9, 20; As shown in FIG. 20, the circuit board extends into the handle.).
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Smith does not expressly disclose wherein the circuit board extends into the handle. Ulmschneider is directed to an endoscope that includes a handle (abstract) and teaches wherein the circuit board extends into the handle (FIGS. 1, 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smith to have circuit board extended to the handle so that the connection to the proximal side could be provided conveniently by the extension of the circuit board.
Regarding claim 17, Smith discloses wherein the circuit board of the distal portion and the circuit board of the proximally extending portion are one single (FIG. 4 shows unitary structure with the distal portion components and circuit board), unitary structure.
Regarding claim 19, Smith discloses wherein the at least one component is mounted to an edge of the circuit board of the distal portion (first electronic component 200a is a camera; FIG. 4 annotated; col. 8, lines 1-10).
Regarding claim 18, Smith does not expressly disclose wherein the proximally extending portion includes at least one winding.
Ulmschneider is directed to an endoscope that includes a handle (abstract) and teaches wherein the proximally extending portion includes at least one winding (Note a flexible circuit board 34; FIG. 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smith to include a winding in accordance with the teaching of Ulmschneider so that flexible PCB could be arranged within the shaft for accommodating other elements of the device.
Regarding claim 23, Smith as modified teaches wherein the circuit board of the proximally extending portion includes a plurality of windings within the shaft (Ulmschneider: Note a flexible circuit board 34; FIG. 5).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 11,153,970) in view of Gilreath (US 20140333743).
Regarding claim 5, Smith discloses wherein at least a segment of the second arm is a flexible segment (PCB 100 is flexible).
Smith discloses does not expressly disclose wherein the flexible segment includes at least one bend.
Gilreath is directed to endoscopy display system including an endoscope with a distal tip having at least three image capturing components (abstract) and teaches wherein the flexible segment includes at least one bend (FIG. 16; Note the bending portion in front section 1702).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smith to have bending sections in the printed circuit board in accordance with the teaching of Gilreath so the attached illumination elements could be positioned to fit within a small space of the shaft (FIG. 1J of Gilreath).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 11,153,970) in view of Ulmschneider (US 20200397232).
Regarding claim 11, Smith does not expressly disclose wherein the proximally extending portion includes at least one winding.
Ulmschneider is directed to an endoscope that includes a handle (abstract) and teaches wherein the proximally extending portion includes at least one winding (Note a flexible circuit board 34; FIG. 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smith to include a winding in accordance with the teaching of Ulmschneider so that flexible PCB could be arranged within the shaft for accommodating other elements of the device.
Claim(s) 12, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 11,153,970) in view of Han (US 20140147128).
Regarding claim 12, Smith does not expressly disclose wherein the proximally extending portion includes at least one coplanar wave guide.
Han is directed to structures for connecting trace lines of printed circuit boards (abstract) and teaches wherein the proximally extending portion includes at least one coplanar wave guide (The ground plate 18 may be configured to serve as a Ground Coplanar Waveguide (GCPW)-type transmission line with respect to the first signal line 12; a flexible printed circuit board (PCB) 11; FIG. 1; para [0042]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smith to include a coplanar wave guide so that additional functions (image transmission via waveguide) could be added to the device.
Regarding claim 13, Smith as modified teaches wherein the proximally extending portion further includes a ground plane (Han: ground plate 18).
Claim(s) 14, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 11,153,970) in view of Winzer (US 20220244465).
Regarding claim 14, Smith does not expressly disclose wherein the proximally extending portion includes a copper plane.
Winzer is directed to structures for connecting trace lines of printed circuit boards (abstract) and teaches wherein the proximally extending portion includes a copper plane (The front lattice structure 13606 can be made of, e.g., steel or copper. Para [0840]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smith to include a copper plane in the proximally extending portion so that such plane could be utilized for forming CPO (coplanar optical modules) modules with the device for enhancing functions of the device.
Regarding claim 15, Smith as modified discloses wherein at least a portion of the copper plane is cross-hatched (The front lattice structure 13606 can be made of, e.g., steel or copper. FIG. 134; Para [0262], [0840]).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 11,153,970) in view of Harrah (US 20230301718).
Regarding claim 21, Smith does not expressly disclose wherein the second arm includes a portion that extends over the imaging device.
Harrah is directed to medical devices (abstract) and teaches wherein the second arm includes a portion that extends over the imaging device (imaging device 124; Laser fiber 120; FIG. 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smith to have illumination device extended over the imaging device in accordance with the teaching of Harrah so that illumination could be provided by being closer to the object.
Claim(s) 24, is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 11,153,970) in view of Harrah (US 20230301718).
Regarding claim 24, Smith discloses wherein the circuit board of the distal portion includes a body (FIG. 4), a first arm extending from the body (FIG. 4), and a second arm extending from the body (FIG. 4), wherein the at least one component includes an imaging device (first electronic component 200a is a camera; FIG. 4; col. 8, lines 1-10) mounted on an edge of a distal end of the body, a first lighting element (LED 200b) mounted on an edge of the first arm adjacent to a first side of the imaging device (FIG. 4), and a second lighting element (LED 200c) mounted on an edge of the second arm adjacent to a second side of the imaging device, wherein the second side is perpendicular to the first side (Side of the imaging device could be chosen so that second side is perpendicular to the first side).
Smith does not expressly disclose wherein the second arm includes a portion that extends over the imaging device.
Harrah is directed to medical devices (abstract) and teaches wherein the second arm includes a portion that extends over the imaging device (imaging device 124; Laser fiber 120; FIG. 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smith to have illumination device extended over the imaging device in accordance with the teaching of Harrah so that illumination could be provided by being closer to the object.
Response to Arguments
Applicant’s arguments submitted on March 31, 2026, have been fully considered and are persuasive. Therefore, the rejection dated 12/31/2025 have been withdrawn. However, upon further consideration, a new rejection has been made in view of amendment. See rejection set forth above.
Claim 1
With respect to independent claim 1, the applicant argues that Smith does not disclose at least, "a first arm extending from the body, wherein a first lighting element is mounted on a first edge of the first arm, such that the first lighting element is adjacent to a first side of the imaging device" and "a second arm extending from the body, wherein a second lighting element is mounted on a second edge of the second arm such that the second lighting element is adjacent to a second side of the imaging device, wherein the second side is perpendicular to the first side."
Defining the first edge of the first arm, second edge of the second arm, and first side and second side of the imaging device, as shown in FIG. 4, annotated and attached below, meets all the limitation of claim 1.
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Claim 16
Regarding claim 16, Ulmschneider is directed to an endoscope that includes a handle (abstract) and teaches wherein the circuit board extends into the handle (FIGS. 1, 5). See new rejection under 103 above.
Claim 20
See restriction above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO – 892. For example, see Berkowitz (US 20220369472) (printed flexible substrate 550; FIG. 5, annotated below; printed flexible substrate 550 has a proximally extending portion; Para [0044]) for winding near the distal portion. Berkowitz reads on claim 20.
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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 SHANKAR R GHIMIRE whose telephone number is (571)272-0515. The examiner can normally be reached 8 AM - 5 PM.
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, Anhtuan Nguyen can be reached on 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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/SHANKAR RAJ GHIMIRE/Examiner, Art Unit 3795
/ANH TUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795 05/11/26
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