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 .
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 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).
Appropriate correction is required.
Claim Interpretation
In regards to claim 1, the claim reads “the suction hole extends axially forward from the suction channel to the suction end surface to form a suction opening”. The “suction opening”, as set forth here, is a thing or concept that is only limited by having some undefined relationship with the suction hole, suction channel and suction end surface, ie. it can be pretty much anything whatsoever without limit. Any amendments to narrow the scope of the term should be considered very carefully.
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 and 5-11 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 “wherein the tip portion is provided with a suction hole in communication with the suction channel and an operating hole through which the operating component extends” [lines 8-9]. It is unclear if the tip portion is provided with the operating hole, or if the suction hole is in communication with the operating hole. Therefore, the claim is unclear. For the purposes of prosecution, the former is assumed to be correct.
Election/Restriction
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) 1-4, drawn to a visual uteroscope and details of a suction end surface thereof.
Group 2, claim(s) 1 and 5-11, drawn to a visual uteroscope and details of an operating hole and suction hole thereof.
Group 3, claim(s) 1 and 12-17, drawn a visual uteroscope and details of further channels thereof.
Group 4, claim(s) 1 and 18, drawn to a visual uteroscope and details of the lights and camera thereof.
Group 5, claim(s) 1 and 19, drawn to a visual uteroscope and details of an operating component thereof.
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:
The common technical feature uniting groups 1-5 together is A visual ureteroscope, comprising: a ureteroscope body comprising a ureteroscope tube and an operating component mounted to the ureteroscope tube, and the ureteroscope body being provided with a suction channel extending axially along the ureteroscope tube; and a ureteroscope tip provided on the ureteroscope body, the ureteroscope tip comprising: a tip portion provided at a front end of the ureteroscope tube, the tip portion having an imaging end surface and a suction end surface located in front of the imaging end surface, wherein the tip portion is provided with a suction hole in communication with the suction channel and an operating hole through which the operating component extends, the suction hole extends axially forward from the suction channel to the suction end surface to form a suction opening, and the operating hole extends obliquely forward, so that the operating component extending out of the operating hole extends obliquely forward out of the tip portion; and an image capturing device comprising a camera mounted on the imaging end surface of the tip portion, wherein both the suction opening of the suction hole and a head portion of the operating component extending out of the operating hole are located within a field of view of the camera. (this is the text of claim 1)
This element cannot be a special technical feature under PCT rule 13.2 because the element is shown in the prior art. Chu et al. (US 2020/0352650) discloses a visual ureteroscope, comprising:
a ureteroscope body [12, Fig.1, para.26, 29] comprising a ureteroscope tube [20, Figs.1-2, para.26, 29] and an operating component [16, 26, Figs.1-2, para.29] mounted to the ureteroscope tube, and the ureteroscope body being provided with a suction channel [28, Figs.1-3, para.29] extending axially along the ureteroscope tube; and
a ureteroscope tip [30, 36, distal portion of 20, para.29, 31, 33] provided on the ureteroscope body, the ureteroscope tip comprising:
a tip portion [30, 36, distal portion of 20] provided at a front end of the ureteroscope tube, the tip portion having an imaging end surface [surface with 38 installed, Fig.2, para.31] and a suction end surface [66, Fig.2, para.35] located in front of the imaging end surface, wherein the tip portion is provided with a suction hole [aperture in distal tip of 28, Figs.1-2] in communication with the suction channel and an operating hole [34, Fig.2, para.31] through which the operating component extends, the suction hole extends axially forward from the suction channel to the suction end surface [Fig.2] to form a suction opening [see the claim interpretation section hereinabove], and the operating hole extends obliquely forward [the applicant has not set forth what the operating hole extends obliquely forward relative to], so that the operating component extending out of the operating hole extends obliquely [Fig.2: the applicant has not set forth what the operating component extends obliquely relative to] forward out of the tip portion [para.37]; and
an image capturing device [38, Fig.2, para.31] comprising a camera [38, para.31] mounted on the imaging end surface of the tip portion [Fig.2, para.31], wherein both the suction opening of the suction hole [see the claim interpretation section hereinabove] and a head portion of the operating component extending out of the operating hole [Figs.1-2, para.29: further as the laser fiber 26 is flexible] are located within a field of view of the camera.
During a telephone conversation with Rong Yang, a provisional election was made without traverse to prosecute the invention of Group 2, claims 1 and 5-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 2-4 and 12-19 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or 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 or species 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 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 on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may 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. Where such evidence or admission is provided by applicant, 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(a) of the other invention.
Applicant is reminded that upon the cancellation 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 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 and 5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Chu et al. (US 2020/0352650).
In regards to Claim 1, Chu discloses a visual ureteroscope, comprising:
a ureteroscope body [12, Fig.1, para.26, 29: it could be thus used] comprising a ureteroscope tube [20, Figs.1-2, para.26, 29] and an operating component [16, 26, Figs.1-2, para.29] mounted to the ureteroscope tube, and the ureteroscope body being provided with a suction channel [28, Figs.1-3, para.29] extending axially along the ureteroscope tube; and
a ureteroscope tip [30, 36, distal portion of 20, para.29, 31, 33] provided on the ureteroscope body, the ureteroscope tip comprising:
a tip portion [30, 36, distal portion of 20] provided at a front end of the ureteroscope tube, the tip portion having an imaging end surface [surface with 38 installed, Fig.2, para.31] and a suction end surface [66, Fig.2, para.35] located in front of the imaging end surface, wherein the tip portion is provided with a suction hole [aperture in distal tip of 28, Figs.1-2] in communication with the suction channel and an operating hole [34, Fig.2, para.31] through which the operating component extends, the suction hole extends axially forward from the suction channel to the suction end surface [Fig.2] to form a suction opening [see the claim interpretation section hereinabove], and the operating hole extends obliquely forward [the applicant has not set forth what the operating hole extends obliquely forward relative to], so that the operating component extending out of the operating hole extends obliquely [Fig.2: the applicant has not set forth what the operating component extends obliquely relative to] forward out of the tip portion [para.37]; and
an image capturing device [38, Fig.2, para.31] comprising a camera [38, para.31] mounted on the imaging end surface of the tip portion [Fig.2, para.31], wherein both the suction opening of the suction hole [see the claim interpretation section hereinabove] and a head portion of the operating component extending out of the operating hole [Figs.1-2, para.29: further as the laser fiber 26 is flexible] are located within a field of view of the camera.
In regards to claim 5, Chu discloses the visual uteroscope according to claim 1, wherein an operating opening of the operating hole of the tip portion faces the suction opening of the suction hole of the tip portion [Fig.2, also see the claim interpretation section hereinabove: the suction opening may be defined in this fashion].
Allowable Subject Matter
Claims 6-11 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, a ureteroscope comprising:
a scope body comprising an insertion tube and an operating component mounted to the insertion tube, and the scope body being provided with a suction channel extending axially along the insertion tube; and
a tip provided on the scope body, the tip comprising:
an imaging end surface and a suction end surface located in front of the imaging end surface,
a suction hole in communication with the suction channel, the suction hole extends axially forward from the suction channel to the suction end surface,
an operating hole through which the operating component extends, and the operating hole extends obliquely forward, so that the operating component extending out of the operating hole extends obliquely forward out of the tip portion; and
an image capturing device comprising a camera mounted on the imaging end surface, wherein both the suction opening of the suction hole and a head portion of the operating component extending out of the operating hole are located within a field of view of the camera,
(claim 6) wherein respective central axes of the operating hole and the suction hole intersect,
OR
(claim 8) wherein the operating hole extends obliquely forward and inward from a rear end surface of the tip to an inner wall surface of the suction hole, the operating channel thus opening on the inner wall surface of the suction hole.
Matsuura (US 4,860,731) discloses an endoscope wherein an operating hole of an operating channel extends obliquely forward to open on an inner wall surface of a suction hole, within a body of an endoscope.
Mohr (US 2008/0108871) discloses an endoscope wherein a suction channel opens on an inner wall surface of an operating hole of an operating channel within a distal tip of the endoscope.
Harrah et al. (US 2017/0215965) discloses the above except for providing a suction hole which is in union with the operating hole, and the details of the specified claims.
Chu et al. (US 2020/0352650) discloses the above except for the specifics of the specified claims.
Sato (US 2021/0068616) discloses an endoscope wherein an operating channel opening (hole) extends obliquely towards a center axis of the endoscope, away from an edge of a distal end of an endoscope tip.
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Matsuura (US 4,860,731)
Mohr (US 2008/0108871)
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