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 .
Response to Amendment
The Amendment filed July 22nd, 2026 has been entered. Claims 1 and 9 have been amended. Claim 3 has been cancelled. Claims 1-2, 4, 6, 10-14 are now pending in the application, with claims 5, 7-9 withdrawn.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2, 4, 6 and 10-14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claim 1 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.
Claim 1 recites the limitation “wherein the corresponding electrode is provided on an outer surface of the insertion portion at the bending section” which is drawn to a non-elected embodiment depicted in FIG. 10 of the present application. The examiner suggests amending the claim to remove the limitation.
Examiner’s Comments
The present rejection(s) reference specific passages from cited prior art. However, Applicant is advised that the rejections are based on the entirety of each cited prior art. That is, each cited prior art reference “must be considered in its entirety”. Therefore, Applicant is advised to review all portions of the cited prior art if traversing a rejection based on the cited prior art.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4, 6, 10-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ikuma et al. (US 20210378729 A1, hereinafter Ikuma).
Regarding Claim 1, Ikuma discloses
An electrode-equipped endoscope system (endoscope system 1, FIG. 1) used for a surgical operation performed using an external electrode (electrode 35, FIG. 1), the electrode-equipped endoscope system comprising:
a corresponding electrode (collection electrode 11c, FIG. 1) provided at a distal end portion (distal end 11a, FIG. 1) of an insertion portion (sheath 11, FIG. 1) to be inserted into a body cavity (par. 21-22 disclose device configured to be inserted into human body subject) and through which a current from the external electrode flows (par. 77 discloses a high-frequency current flows from the electrode to the collection electrode);
a bending section (elastic region 37, FIG. 2) provided at the distal end portion (depicted in FIG. 1-2); and
a controller (slider 20, FIG. 1) configured to control bending motion of the bending section (par. 37 discloses electrode unit, i.e. including elastic region, moves with the slider, therefore, the degree of sliding the slider adjusts the degree of bending of the elastic portion),
wherein the corresponding electrode is provided on an outer surface of the insertion portion at the bending section,
a distal tip side with respect to the bending section, or
the controller side with respect to the bending section (depicted in FIG. 1).
Regarding Claim 2, Ikuma discloses
The electrode-equipped endoscope system according to claim 1,
wherein the external electrode is used in a bladder in an electrolyte solution environment (par. 21-22 disclose device configured to be inserted into human body subject, i.e. capable of being used in bladder; par. 25 discloses perfusate which is an electrolyte solution is electrically conductive), and
the current from the external electrode flows to the corresponding electrode through the electrolyte solution (par. 77 discloses a high-frequency current flows from the electrode to the collection electrode through perfusate).
Regarding Claim 4, Ikuma discloses
The electrode-equipped endoscope system according to claim 1,
wherein the corresponding electrode has a cylindrical shape (depicted in FIG. 1, 9-11; par. 20 discloses shapes are not limited nor to scale in figures, i.e. rounded shape of collection electrode is capable of being cylindrical when the figure is to scale), and
is externally fit with an outer circumferential surface of the insertion portion (FIG. 1, par. 28 discloses collection electrode is on surface of sheath).
Regarding Claim 6, Ikuma discloses
The electrode-equipped endoscope system according to claim 4, wherein the corresponding electrode has a mesh shape (depicted in FIG. 1, 9-11).
Regarding Claim 10, Ikuma discloses
The electrode-equipped endoscope system according to claim 1, wherein a forceps port through which the external electrode passes is provided on a distal tip surface of the insertion portion (par. 37 discloses electrode unit protrudes from distal end of sheath; FIG. 5, par. 46 discloses electrode protrudes outside a distal end rigid portion and enters from another point from inside, FIG. 5 depicts channel/ port which electrode passes through).
Regarding Claim 11, Ikuma discloses
The electrode-equipped endoscope system according to claim 1, wherein the entire endoscope system is disposable (par. 25 discloses electrolyte solution is physiological saline which is a solution that is commonly known in the art to disposable; par. 112 discloses entire endoscope system can be modified and endoscopes are generally capable of being disposable, i.e. this system is capable of being disposable without departing from the scope of the present invention).
Regarding Claim 12, Ikuma discloses
The electrode-equipped endoscope system according to claim 1, wherein the entire endoscope system is for single use (par. 25 discloses electrolyte solution is physiological saline which is a solution that is commonly known in the art to be designed for single use; par. 112 discloses entire endoscope system can be modified and endoscopes are generally capable of being disposable, i.e. this system is capable of being single-use without departing from the scope of the present invention).
Regarding Claim 13, Ikuma discloses
The electrode-equipped endoscope system according to claim 1,
wherein the insertion portion is inserted into a bladder (par. 21-22 disclose device configured to be inserted into human body subject, i.e. capable of being used in bladder), and
the bending section is bent such that a distal tip surface (electrode unit 30, FIG. 1) of the insertion portion faces a lesion near a communication port (distal end portion 21a1, FIG. 1) with a urethra in the bladder (FIG. 6 depicts bending of elastic region; par. 5 discloses electrode unit is configured to resect or coagulate tissue, i.e. a lesion, inside a subject which is a human body, i.e. capable of being urethra in the bladder; par. 25 discloses observation window, i.e. communication port, at distal end portion used to pick up images inside the human body).
Regarding Claim 14, Ikuma discloses
The electrode-equipped endoscope system according to claim 1,
wherein the controller comprises a control knob (handle 20a, FIG. 1); and
the bending section is configured to bend in response to operation of the control knob (par. 30 discloses handle moves slider, par. 37 discloses electrode unit, i.e. including elastic region, moves with the slider, therefore, the degree of sliding the slider, via the handle, adjusts the degree of bending of the elastic portion).
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishiguro et al. (US 20100022837 A1, hereinafter Ishiguro).
Regarding Claim 1, Ishiguro discloses
An electrode-equipped endoscope system (endoscope apparatus 1, FIG. 1) used for a surgical operation performed using an external electrode (return electrode 115, FIG. 1),
the electrode-equipped endoscope system comprising:
a corresponding electrode (high-frequency treatment electrode 118, FIG. 1) provided at a distal end portion (distal end portion 33, FIG. 1) of an insertion portion (insertion portion 21, FIG. 1) to be inserted into a body cavity and through which a current from the external electrode flows (FIG. 1, par. 60 disclose insertion portion inserted into a body cavity; par. 84 discloses return electrode provides high frequency power to insertion portion, par. 123 discloses current flowing through shape memory alloy wires inside insertion portion, i.e. via return electrode);
a bending section (bending portion 32, FIG. 1) provided at the distal end portion (depicted in FIG. 1); and
a controller (angle manipulation knob 23, FIG. 1) configured to control bending motion of the bending section (FIG. 1, par. 60 disclose bending portion is bent by manipulating angle knob),
wherein the corresponding electrode is provided on an outer surface of the insertion portion at the bending section,
a distal tip side with respect to the bending section (depicted in FIG. 1), or
the controller side with respect to the bending section.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDUL HADI ABBASI whose telephone number is (571)272-4076. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 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 at (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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/ABDUL HADI ABBASI/Examiner, Art Unit 3795
/RYAN N HENDERSON/Primary Examiner, Art Unit 3795
