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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “securement means” and “securing point”.
Claim Objections
Claims 2 and 4 are objected to because of the following informalities: the claims include two instances of repeated words (“the the”). The Examiner assumes only one “the” was intended. Appropriate correction is required.
Claim 2 also states “an angle less than 45 degrees to line normal” where the Examiner assumes this is “an angle less than 45 degrees to a line normal”. 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 1-4 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.
Claim 1 states “an embedded wire portion of the wire extending, from the exit point, beneath the inner surface” where it is unclear what is meant by “beneath the inner surface”. Given that this is the embedded wire portion, if that portion extends beneath or below the inner surface, it would no longer be embedded. Being embedded presumably means that the wire is between the inner and outer surfaces. If the wire is beneath the inner surface, it is not embedded. What does Applicant mean by “beneath the inner surface” in this context? The Examiner assumes the embedded wire portion is that portion where the wire remains between the inner and outer surfaces. Appropriate correction is required.
Claim limitation “securement means” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The Specification does not clearly set forth what the “securement means” is as the term is not used in the Specification. If the Specification discloses the claimed means, then the record should be clarified as to what that means is. Without some clear direction in the Specification, the scope of the claim cannot be determined. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102/103
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.
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 19-21 are rejected under 35 U.S.C. 102(a1/a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Krasnicki et al. (US 4,676,229).
Regarding Claim 19, Krasnicki discloses:
A working channel tube made by the method of claim 5 (see Figs. 3 and 4 showing the embedded wire 33 or 47 between outer and inner surfaces of a biopsy channel). Krasnicki discloses the same structure as Applicant’s device as shown in the figures, even though it may be made by a different process. Furthermore, to the extent there is a slight difference, the Examiner notes that as shown in Fig. 1, the helical wire is not extending beyond the outer surface of the endoscope. There was some means of ensuring the wire stays embedded in the endoscope during the manufacturing process. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to remove the ends of Krasnicki’s wire to ensure they are not extending beyond the outer surface of the endoscope body where they could injure the patient.
Regarding Claim 20, Krasnicki discloses:
An endoscope (10) comprising the working channel tube of claim 19 (see rejection above).
Regarding Claim 21, Krasnicki discloses:
A visualization system comprising a video processing apparatus (13) and the endoscope of claim 20 (see rejection above), wherein the video processing apparatus is couplable to the endoscope and capable of processing an image recorded by the endoscope and outputting the image on a display (Col 2 Lines 37-44).
Allowable Subject Matter
Claims 5-18 are allowed.
Claims 1-4 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The primary reason the claims are allowable over the prior art is that the prior art fails to disclose or render obvious the specific steps of the claimed methods (both claims 1 and 5). The claims require numerous steps related to a wire exiting a working channel tube of an endoscope. These steps are directed to a particular way in which excess wire can be removed from the tube. Cutting the wire would be an obvious solution, but Applicant has chosen a different route. Applicant’s invention involves a specific set of steps where the wire extends to a bend and then going back so that the wire can be twisted until it breaks. The Examiner found no reference with the claimed features.
The European Search Report may have considered the limitations obvious, but the Examiner does not see where the references discuss the claimed steps. Even the Report fails to specifically address several limitations of the claim with any detail, and a conclusory statement is made regarding that it is well-known to twist wires to break them. The Report makes reference to a Chinese document in its entirety, but even assuming that twisting wires to break them is known in the art, the claims contain far more detail than that. The Examiner asserts that the references relied upon in the Report do not render the claims obvious under US practice.
For at least these reasons, the claims overcome the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY JAY NEAL whose telephone number is (313)446-4878. The examiner can normally be reached Mon-Fri 7:30-5:30.
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/TIMOTHY J NEAL/Primary Examiner, Art Unit 3795