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 .
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(s) is/are: light detection unit in claims 1 and 6.
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.
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group 1, claim(s) 1-2 and 4-8, drawn to characteristics of the endoscope lighting system.
Group 2, claims 1, 3, 18 and 20, drawn to characteristics of the processor.
Group 3, claims 1 and 9-13, drawn to where the measuring device comprises a telecentric lens.
Group 4, claims 1 and 14, drawn to where the measuring device comprises an Ulbricht sphere.
Group 5, claims 1, 15-17 and 19, drawn to where the measuring device comprises a diffuser.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups 1-5 lack unity of invention because even though the inventions of these groups require the technical feature of
An endoscope apparatus comprising a measuring device adapted to be mountable on an endoscope head of the endoscope apparatus for determining a characteristic parameter of an endoscope lighting of the endoscope apparatus, wherein the endoscope lighting comprises at least one optical element through which light passes, wherein the measuring device comprises a light detection unit adapted to determine the characteristic parameter, wherein the endoscope head comprises a light exit area through which the endoscope lighting outputs a light amount of a light emitted from a light source, the light emitted from the light source having a luminosity up to a preset maximum luminosity, andthe characteristic parameter is based on the light amount incident on the light detection unit; and a processing unit adapted to readjust the preset maximum luminosity based on the determined characteristic parameter (this is the text of claim 1)
this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of McCafferey et al. (US 2014/0246536)
McCaffrey discloses an endoscope apparatus comprising
a measuring device [320, Fig.3, para.47] adapted to be mountable on an endoscope head of the endoscope apparatus for determining a characteristic parameter [para.55, 57-58, 60-61; the measured light parameter used for light source calibration] of an endoscope lighting [304, Fig.3, para.47, 58] of the endoscope apparatus,
wherein the endoscope lighting comprises at least one optical element [“aperture”, para.58] through which light passes,
wherein the measuring device comprises a light detection unit [344, para.48, 57-58: as this is also a photodetector, this is equivalent to applicant’s light detection unit 102, Fig.1, page 17: this is 112 (f) interpretation of the term “light detection unit”] adapted to determine the characteristic parameter,
wherein the endoscope head comprises a light exit area [para.58] through which the endoscope lighting outputs a light amount of a light emitted from a light source, the light emitted from the light source having a luminosity up to a preset maximum luminosity, and
the characteristic parameter is based on the light amount incident on the light detection unit [para.58, 60]; and
a processing unit [340, para.48, 55, 58, 60-61] adapted to readjust the preset maximum luminosity based on the determined characteristic parameter.
During a telephone conversation with William Boshnik on 21 January, 2026 a provisional election was made with traverse to prosecute the invention of Group 1, claims 1-2 and 4-8. Affirmation of this election must be made by applicant in replying to this Office action. Claims 2 and 9-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file. Accordingly, the benefit of foreign priority under 35 U.S.C. 119(a)-(d) is obtained.
Claim Objections
Claim 1 is objected to because of the following informalities:
In regards to claim 1, the claim does not provide indentation where new items are provided. Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i). See MPEP 6.08.01 (m).
In particular, claim 1 should have a new line after “comprising” on line 1, and dependent claims preambles should be modified to make sense when depending from the newly modified claim 1.
Appropriate correction is required.
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 1-2 and 4-8 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 pre-AIA the applicant regards as the invention.
In regards to claim 1, the claim reads “the light amount incident on the light detection unit” [lines 11-12]. There is insufficient antecedent basis for this limitation in the claim. Therefore, the claim is unclear. For the purposes of prosecution, it will be assumed that this is a newly recited item. Note that this is different from “a light amount of light emitted from a light source” of line 9 of the claim.
In regards to claims 2 and 4-8, the claims read “a measuring device” [line 1]. It is unclear if this is the same as the measuring device of claim 1, line 1. Therefore, the claims are unclear. For the purposes of prosecution, it will be assumed these are the same item.
In regards to claim 6, the claim reads “the cross-sectional area of the at least one optical element” [lines 5-6]. There is insufficient antecedent basis for this limitation in the claim. Therefore, the claim is unclear. For the purposes of prosecution, it will be assumed that this is a newly recited item.
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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as anticipated by McCafferey et al. (US 2014/0246536).
In regards to Claim 1, McCaffrey discloses an endoscope apparatus comprising
a measuring device [320, Fig.3, para.47] adapted to be mountable on an endoscope head [302, Fig.3, para.49] of the endoscope apparatus for determining a characteristic parameter [para.55, 57-58, 60-61; the measured light parameter used for light source calibration] of an endoscope lighting [304, Fig.3, para.47, 58] of the endoscope apparatus,
wherein the endoscope lighting comprises at least one optical element [“aperture”, para.58] through which light passes,
wherein the measuring device comprises a light detection unit [344, para.48, 57-58: as this is also a photodetector, this is equivalent to applicant’s light detection unit 102, Fig.1, page 17: this is 112 (f) interpretation of the term “light detection unit”] adapted to determine the characteristic parameter,
wherein the endoscope head comprises a light exit area [para.58] through which the endoscope lighting outputs a light amount of a light emitted from a light source, the light emitted from the light source having a luminosity up to a preset maximum luminosity, and
the characteristic parameter is based on the light amount incident on the light detection unit [para.58, 60]; and
a processing unit [340, para.48, 55, 58, 60-61] adapted to readjust the preset maximum luminosity based on the determined characteristic parameter.
In regards to claim 2, McCaffrey discloses the endoscope apparatus comprising a measuring device according to claim 1, wherein the light source is integrated in the endoscope apparatus [Fig.3].
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 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over McCafferey et al. (US 2014/0246536) in view of Dunki-Jacobs et al. (US 2004/0064018).
In regards to claim 4, McCaffrey discloses the endoscope apparatus comprising a measuring device according to claim 1,
however does not positively disclose wherein the endoscope lighting comprises a light guide as the at least one optical element, the light guide being adapted to guide the light of the light source to the endoscope head where the light amount is emitted from the light exit area.
McCaffrey further discloses where the light source is within a distal end of the endoscope insertion portion [Fig.3] proximal to a distal face of the endoscope insertion portion, where the light from the light source passes through an adjustable aperture before emission [para.58] however does not otherwise particularly detail how the light from the light source is transported from the light source to be emitted from the endoscope insertion portion.
Dunki-Jacobs teaches an endoscope insertion portion [26, 28, Figs.2-3] wherein a light source [50, Fig.3, para.29-30] of an endoscope lighting [40, 50, 52, 54, Figs.3-4, para.29-30] is within a distal end [26 and distal part of 28, Figs.2-3] of the endoscope insertion portion,
wherein the endoscope lighting comprises a light guide [40, Figs.3-4, para.29-30], the light guide being adapted to guide the light of the light source to an endoscope head [26 excluding proximal parts thereof, Figs.2-4] where a light amount is emitted from a light exit area [distal tip of 40, Figs.3-4, para.29-31].
Therefore, it would have been obvious to one having ordinary skill in the art to modify the endoscope lighting disclosed by McCaffrey to have a light guide in accordance with the teaching of Dunki-Jacobs. This would be done as Dunki-Jacobs shows that it is known in the art to use a light guide to transport light from a distal end light source to a light exit area to be emitted from an endoscope insertion portion at the light exit area, and for the predictable result of efficiently guiding light from the light source to where it is to be used.
In regards to claim 5, McCaffrey in view of Dunki-Jacobs teaches the endoscope apparatus comprising a measuring device according to claim 4, wherein
the endoscope lighting comprises a light exit window [Dunki-Jacobs: Distal face of 40, Fig.3, para.30-31] as a further optical element, the light exit area being formed by, insofar as the endoscope lighting comprises the light exit window as the further optical element, the light exit window.
Allowable Subject Matter
Claims 6-8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: The prior art fails to teach, among other features, an endoscope apparatus comprising lighting, an endoscope head, a processor and a measuring device,
the measuring device comprising a light detection unit which is a photodetector or an imaging device or equivalent thereof (this is 112 (f) interpretation of the term “light detection unit), the measuring device configured to be mountable on the endoscope head for determining a parameter of the lighting,
the endoscope head having a light exit area through which the lighting outputs an amount of light emitted from a light source, the light emitted from the light source having luminosity up to a preset luminosity,
the lighting having at least one optical element through which light passes,
the parameter based on an amount of light incident on the light detection unit,
the processor configured to adjust the preset luminosity based on the parameter, and
(claim 6) wherein the light amount emitted from the at least one optical element and incident on the light detection unit illuminates a section on the light detection unit, and
an area of this section of the light detection unit is larger than or equal to a cross-sectional area of the at least one optical element, and
the light detection unit is configured to measure a light emitting area of the at least one optical element and determine a ratio of the light-emitting area to a non-light-emitting area of the at least one optical element.
McCafferey et al. (US 2014/0246536) teaches the above except for the specifics of claim 6.
Sato (US 5,268,732) teaches an analogous measuring device for evaluating an optical fiber.
Hirt et al. (US 2003/01007726) teaches the above except for the processor being configured to adjust the preset luminosity, and the specifics of claim 6.
Irion et al. (US 2016/0015247) teaches the above except for the processor being configured to adjust the preset luminosity, and the specifics of claim 6.
There is no reason or suggestion provided in the prior art to modify the above prior art to teach the limitations as claimed above, and the only reason to modify the references would be based on Applicant's disclosure, which is impermissible hindsight reasoning.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON B FAIRCHILD whose telephone number is (571)270-5276. The examiner can normally be reached 8:30am-5pm Monday-Friday.
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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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/AARON B FAIRCHILD/Primary Examiner, Art Unit 3795