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.
Claim 1 and 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.
Claim 1 recites “a first opening portion” and “a second opening portion”. These terms are deemed to lack sufficient written description since the term does not appear in the Detailed Description section of the Specification. It only appears in the Summary section, but without an explicit linking of the term used in the Specification with the term in the Claims, there exists ambiguity as to what the term defines and therefore whether the claim term has proper written description. This rejection does not dispute the ability of the applicant to be their own lexicographer and use whatever terms they prefer. The issue is in providing the proper written description that connects the claim term to the appropriate term used in the Specification.
Applicant asserts that “The specification fully supports the recited portions. For example, in a non-limiting embodiment, the specification discloses an example of a first opening (e.g., 32), which includes an example of a first opening portion (e.g., 32a) and an example of a second opening portion (e.g., 32b). See, e.g., original application, [0049] and Fig. 6. Although the specification describes the examples of the first and second opening portions (e.g., 32a, 32b) as ‘distal end opening’ and ‘upper surface opening,’ respectively” as support for this explicit linking, but 0049 does not achieve this. 0049 states “the opening 32 is a hole portion where a distal end opening 32a and an upper surface opening 32a are communicated with each other”. Under no interpretation would this statement equate the distal end opening to the first opening portion and the upper surface opening to the second opening portion, let alone the distal end opening to be EITHER the first or the second opening portion. This applies for the following additional terms and maintained from the prior office action:
“first periphery portion” and “second periphery portion”;
“first thin wall” and “second thin wall”.
“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:
“and the first periphery portion is a side farthest from the second opening portion than other sides of the first opening portion”. This phrase is grammatically confusing. It appears applicant is intending to recite something along the lines of “and the first periphery portion is a side farthest from the second opening portion, farther than the other sides of the first opening portion” or “and the first periphery portion is a side farther from the second opening portion than the other sides of the first opening portion”.
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”, e.g at 0064. This rejection is maintained from the prior office action.
Based on the indefiniteness issues, the claims will be interpreted as provided in the rejection below.
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) 1-9 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);
wherein:
a longitudinal axis of the distal end cover 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);
the first opening includes:
a first opening portion provided in the first body portion 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, e.g. the opening at the tip also seen in fig 4B showing a rectangular tear starting point 36); and
a second opening portion provided in the second body portion (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, e.g. the opening on the cylindrical body portion);
a first periphery portion forms one side of the first opening portion (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, e.g. the bottom edge of the tear starting point 36), and
the first periphery portion is a side farthest from the second opening portion than other sides of the first opening portion (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, tear starting point 36 is the distal most portion of the opening, i.e. furthest from the second opening)”.
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 second opening portion (fig 3 shows periphery of the opening on the cylindrical body portion); and
a first thin wall portion (based on the indefiniteness cited above, second thin portion 38; fig 2, 3; 0060, where fig 3 shows for example a narrowing of the distal wall/first periphery portion at arrow 36, where this thickness is less than the thickness of the second periphery portion/side walls of the cap in fig 3) 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 (based on the indefiniteness cited above, fig 3 shows a second periphery portion/side wall with a thinner portion, e.g. 33 than a thicker portion e.g. 31a)”.
Iizuka discloses for claim 4, “The distal end cover according to claim 3, wherein the thickness of the second thin wall 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 wall 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);
and
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 of the distal end cover is 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);
the first opening includes: (fig 2);
a first opening portion provided in the first body portion 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, e.g. the opening at the tip also seen in fig 4B showing a rectangular tear starting point 36); and
a second opening portion provided in the second body portion;
a first periphery portion forms one side of the first opening portion; and
the first periphery portion is a side farthest from the second opening portion than other sides of the first opening portion (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, e.g. the opening on the cylindrical body portion)”.
Iizuka discloses for claim 8, “The distal end cover according to claim 1, wherein the first periphery portion is a planar surface extending in a horizontal direction that is orthogonal to the longitudinal axis of the distal end cover (fig 2 shows the tip of the cap which is configured with a flat orthogonal distal face as is the claimed invention in fig 6)”.
Iizuka discloses for claim 9, “The endoscope according to claim 7, wherein the first periphery portion is a planar surface extending in a horizontal direction that is orthogonal to the longitudinal axis of the distal end cover (fig 2 shows the tip of the cap which is configured with a flat orthogonal distal face as is the claimed invention in fig 6).
Response to Arguments
Applicant's arguments filed 6/9/2026 have been fully considered but they are not persuasive.
For applicant’s first argument with respect to the 112a written description requirement:
The terms are deemed to lack sufficient written description since the term does not appear in the Detailed Description section of the Specification. It only appears in the Summary section, but without an explicit linking of the term used in the Specification with the term in the Claims, there exists ambiguity as to what the term defines and therefore whether the claim term has proper written description. This rejection does not dispute the ability of the applicant to be their own lexicographer and use whatever terms they prefer. The issue is in providing the proper written description that connects the claim term to the appropriate term used in the Specification.
For applicant’s argument regarding the prior art rejection of claims 1 and 7, the tear starting point 36 is considered to be substantially rectangular as shown with the red rectangle. The rectangle has two longer vertical parallel sides with a shorter horizontal side.
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Applicant’s arguments with respect to claim(s) 2 and 3 have been considered but are moot because the new ground of rejection applied as necessitated by the indefiniteness of the claims in this office action and the prior one, does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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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/Jae Woo/Examiner, Art Unit 3795
/ANHTUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
9/9/26
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