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 .
Cited Prior Art
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”. (See MPEP 2141.02(VI)) Therefore, Applicant is advised to review all relevant portions of the cited prior art if traversing a rejection based on the cited prior art.
Claim Rejections - 35 USC § 112a
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 7 and any dependent claims are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-3, 7 recite elements (third opening, fourth opening, first periphery portion, second periphery portion, first thin wall portion, second thin wall portion) which are either not found in the detailed specification or where the definition is ambiguous and therefore are considered lacking written description. For example, the third and fourth openings do not appear in the detailed specification. For the first periphery portion and second periphery portion, the specification only describes a “periphery portion” without specifying a first or second. For the first thin wall portion and the second thin wall portion, three different element have been recited as the same, e.g. at 0072, front surface portion 31a (first body portion) and front surface portion 31a (first thin wall portion). Due to the ambiguities or simply absent definitions, the specification is deemed to be lacking proper written description.
Claim Rejections - 35 USC § 112b
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 1-7 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 7 recite “a third opening provided in the second body portion and included in the first opening”. It is unclear what the scope of the “third opening” entails, i.e. how it is to be defined with respect to the first opening as the claim requires it be “included in the first opening”. Specifically, an opening is considered to be a single opening since it has only one contiguous physical circumference. It is unclear how a second opening can be included in another opening. This is also true for “fourth opening”.
The recitation of “first periphery portion” and “second periphery portion” is also unclear since the detailed specification only mentions “periphery portion” without defining a “first” or “second”. Additionally, due to the indefiniteness of an opening being “included” in another opening, the scope of these elements are indefinite.
Claim 2 further recites “a first thin wall portion” but it is unclear what the scope of this element is since the specification defines the “front surface portion 31a” as both “first body portion” and “first thin wall portion” 0072. These latter two elements are separately recited in the claims and therefore are considered different and distinct elements, but the specification appears to equate them both as the “front surface portion 31a”. This is also true for “a second thin wall portion” in claim 3.
Claims 4 and 5 recite “the second thin portion” and “the first thin portion”, both lacking antecedent basis.
Based on the indefiniteness issues, the claims will be interpreted as provided in the rejection below.
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) 1-7 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Iizuka US20170238789.
Iizuka discloses for claim 1, “A distal end cover comprising:
a cover body (body of cover 30; fig 2; 0054) having a bottomed cylindrical shape, the cover body including a first body portion and a second body portion forming a cylindrical peripheral surface (fig 2 shows a comparable shaped cover);
a first opening formed in the first body portion and the second body portion (fig 2 shows a comparable opening 31 at the first body portion; 0054-0056);
a second opening formed on a side opposite to the first body portion with respect to the second body portion (fig 2 shows a comparable opening at the second body portion), the second opening being configured to receive a distal end portion of an insertion portion of an endoscope (fig 2 shows the how the cap covers the endoscope tip);
a longitudinal axis being parallel or coincident with a longitudinal axis of the insertion portion in a state in which the distal end cover is mounted on the insertion portion (fig 2);
a third opening provided in the second body portion and included in the first opening (fig 2 is cited to show a comparable opening with a circumference considered to read on the claim as interpreted herein based on the cited indefiniteness);
a fourth opening provided in the first body portion, included in the first opening, and formed in a rectangular shape (fig 2 is cited to show a comparable opening with a circumference considered to read on the claim as interpreted herein based on the cited indefiniteness); and
a first periphery portion forming one side of the fourth opening (fig 2 is cited to show a comparable opening with a circumference considered to read on the claim as interpreted herein based on the cited indefiniteness), wherein
the first periphery portion is a side farthest from the third opening than other sides of the fourth opening (fig 2 is cited to show a comparable opening with a circumference considered to read on the claim as interpreted herein based on the cited indefiniteness)”.
Iizuka discloses for claim 2, “The distal end cover according to claim 1, further comprising:
a second periphery portion provided in the second body portion along the longitudinal axis and forming a portion of the third opening (fig 3 shows periphery of the opening); and
a first thin wall portion (first thin portion 37; fig 2, 3; 0060) forming at least a portion of the first periphery portion, a wall thickness of the first thin wall portion being smaller than a wall thickness of the second periphery portion”.
Iizuka discloses for claim 3, “The distal end cover according to claim 2, further comprising a second thin wall portion formed along the second periphery portion, a wall thickness of the second thin wall portion being smaller than the wall thickness of the second periphery portion (second thin portion 38; fig 2, 3; 0060)”.
Iizuka discloses for claim 4, “The distal end cover according to claim 3, wherein the thickness of the second thin portion is smaller than the wall thickness of the first thin wall portion (fig 7D shows a difference of thickness of the portions of the wall)”.
Iizuka discloses for claim 5, “The distal end cover according to claim 2, wherein the first thin portion has a uniform wall thickness and has a planar shape (first thin portion 37; fig 6)”.
Iizuka discloses for claim 6, “The distal end cover according to claim 1, wherein the first periphery portion is formed in an arc shape in cross section taken along the longitudinal axis (fig 4A shows the periphery of the distal portion of the opening as an arc shape)”.
Iizuka discloses for claim 7, “An endoscope comprising:
an insertion portion (2; fig 1) having a longitudinal axis and configured to be inserted into a subject;
a distal end portion (5; fig 1) provided at a distal end of the insertion portion; and
a distal end cover (30; fig 2; 0054) detachably mounted on the distal end portion, wherein the distal end cover includes:
a cover body (body of cover 30; fig 2; 0054) having a bottomed cylindrical shape, the cover body including a first body portion and a second body portion forming a cylindrical peripheral surface (fig 2 shows a comparable shaped cover);
a first opening formed in the first body portion and the second body portion (fig 2 shows a comparable opening 31 at the first body portion; 0054-0056);
a second opening formed on a side opposite to the first body portion with respect to the second body portion (fig 2 shows a comparable opening at the second body portion), the second opening being configured to receive the distal end portion (fig 2 shows the how the cap covers the endoscope tip);
a longitudinal axis being parallel to or coincident with the longitudinal axis of the insertion portion in a state in which the distal end cover is mounted on the insertion portion (fig 2);
a third opening provided in the second body portion and included in the first opening (fig 2 is cited to show a comparable opening with a circumference considered to read on the claim as interpreted herein based on the cited indefiniteness);
a fourth opening provided in the first body portion, included in the first opening, and formed in a rectangular shape (fig 2 is cited to show a comparable opening with a circumference considered to read on the claim as interpreted herein based on the cited indefiniteness); and
a first periphery portion forming one side of the fourth opening, and
the first periphery portion is a side farthest from the third opening than other sides of the fourth opening (fig 2 is cited to show a comparable opening with a circumference considered to read on the claim as interpreted herein based on the cited indefiniteness)”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAE K WOO whose telephone number is (571)272-0837. The examiner can normally be reached M-F 8:30-2:30p, 6p-9p.
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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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/Jae Woo/Examiner, Art Unit 3795
/ANH TUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
3/5/26