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 of group 2 in the reply filed on 10/17/2025 is acknowledged. 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)).
This application contains claims directed to the following patentably distinct species:
The embodiment of FIG. 11-12;
The embodiment of FIG. 13;
The embodiment of FIG. 14;
The embodiment of FIG. 15;
The embodiment of FIG. 16.
The species are independent or distinct because they each attach to different portions of the endoscope. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claim 2 is generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: There is an examination and search burden for these patentably distinct species due to their mutually exclusive characteristics. The species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112(a)..
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve 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 election of species 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 on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them 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 species 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 species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a communication with Tom Spinelli on 02/25/2026 a provisional election was made without traverse to prosecute the invention of species a, claims 2-5, 8-10, and 12-15. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6, 7, 11, and 16 are 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).
Status of Claims
Claims 1-16 are pending, claims 1, 6, 7, 11 and 16 have been withdrawn from consideration, and claims 2-5, 8-10, and 12-15 are currently under consideration for patentability under 37 CFR 1.104
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/30/2024 has been considered by the examiner.
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) 2-5 and 12-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yabe et al. (U.S. 5,545,121).
With respect to claim 2 Yabe et al. teaches a reuse prevention tool comprising:
a cover (19a,18d,18c) that covers at least one part of an endoscope accessory or an endoscope main body portion on an endoscope surface (FIG. 18), with a light guide exposed (13B) so as to be connectable to an endoscope processor; and
a fixing portion (12a) that fixes the cover to the endoscope surface.
With respect to claim 3, Yabe et al. teaches the cover inhibits removal of the endoscope accessory from the endoscope or prevents the endoscope from being reprocessed, by making the endoscope excessive in size relative to a treatment tank of an endoscope reprocessor (FIG. 18).
With respect to claim 4, Yabe et al. teaches the cover exposes an endoscope handle so that the endoscope handle is operable (FIG. 18).
With respect to claim 5, Yabe et al. teaches when the cover covers the endoscope accessory, the endoscope accessory is a suction button, an air/water feeding button, or a ventilation pipe sleeve (19,18a,18b).
With respect to claim 12, Yabe et al. teaches An endoscope comprising the reuse prevention tool according to claim 2, wherein the reuse prevention tool is disposed on an endoscope main body, the endoscope accessory, and a surface of the endoscope accessory or the endoscope main body portion (FIG. 18).
With respect to claim 13, Yabe et al. teaches the cover inhibits removal of the endoscope accessory from the endoscope or prevents the endoscope from being reprocessed, by making the endoscope excessive in size relative to a treatment tank of an endoscope reprocessor (FIG. 18).
With respect to claim 14, Yabe et al. teaches the cover exposes an endoscope handle so that the endoscope handle is operable (FIG. 18).
With respect to claim 15, Yabe et al. teaches when the cover covers the endoscope accessory, the endoscope accessory is a suction button, an air/water feeding button, or a ventilation pipe sleeve (19, 18a,18b).
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(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yabe et al. (U.S. 5,545,121).
With respect to claim 8, another embodiment of Yabe et al. teaches the fixing portion comprises a pressurizing belt configured to prevent the cover from being misaligned from a predetermined site (11:21-25).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify the embodiment of FIG. 18 to utilize tape because Yabe et al. teaches it is a known alternative means of fixing (11:21-25).
With respect to claim 9, this is considered product by process.
With respect to claim 10, another embodiment of Yabe et al. teaches the fixing portion comprises a fragile region (141c) that is more fragile than an adjacent region.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify the embodiment of FIG. 18 to utilize perforations in order to distinguish the used state or unused state at a glance (11:15-20).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexandra Newton Surgan whose telephone number is (571)270-1618. The examiner can normally be reached Monday-Friday 8am-4pm EST.
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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/ALEXANDRA L NEWTON/Primary Examiner, Art Unit 3799
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