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 .
Election/Restrictions
Applicant’s election without traverse of Species B, Figs. 9-11 in the reply filed on 4/27/2026 is acknowledged. The Applicant has stated that claims 1, 4, 5, and 7-13 read on Species B. The Examiner agrees, but also feels, based on the dependency of claims 7-13, that claim 6 should also be permitted to be examined. As such, currently Claims 1 and 4-13 are pending while claims 2-3 and 14-20 have been withdrawn.
Specification
The abstract of the disclosure is objected to because the abstract is longer than 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over WIPO Publication WO2012/043034 to Sugiyama (hereinafter “Sugiyama”) in view of US Patent Application Publication 2020/0178763 to Tilson (hereinafter “Tilson”). In regard to claim 1, Sugiyama discloses an overtube comprising:
a supply and discharge port that is located on a proximal end side and through which a fluid is supplied and discharged (Elements 23a-b); a first region (Fig. 2, 20) that is located on a distal end side with respect to the supply and discharge port (see Fig. 1) and includes an outer tube (Element 27) having a flexibility, an inner tube (Element 26) having a flexibility, and a shape-deformable body (Element 25) that is deformable and is provided between the outer tube and the inner tube (see Fig. 2); wherein the first region is switchable between a first state in which the fluid is supplied to a space between the outer tube and the inner tube via the supply and discharge port and a second state that is stiffer than the first state and in which the fluid is discharged (see highlighted and underlined section of Sugiyama’s English translation which has been provided with this action)
However, Sugiyama does not disclose a second region that is located on the distal end side of the first region. In regards to claims 1 and 4-5, Tilson discloses a dynamically rigidizing medical instrument comprising:
Regarding claim 1, a first region (Element 577a), a second region that is located on the distal end side with respect to the first region and includes the outer tube and the inner tube (Element 577b-c, [0123][0124]), wherein the first region is switchable between a first state a second state that is stiffer than the first state and in which the fluid is discharged, and the second region is softer than the second state of the first region ([0123] [0124] teaches the use of multiple chambers supplied by a fluid to control the stiffness of multiple sections of the device. Therefore, Tilson has taught that multiple regions along the device can have stiffer or softer regions depending on the insertion path of the device.)
Regarding claim 4, wherein the second region includes the shape-deformable body, and the second region is switchable between the first state in which the fluid is supplied to the space between the outer tube and the inner tube via the supply and discharge port and the second state in which the fluid is discharged ([0123][0124])
wherein the first state of the second region is softer than the first state of the first region, and the second state of the second region is softer than the second state of the first region ([0123] [0124] teaches the use of multiple chambers supplied by a fluid to control the stiffness of multiple sections of the device. Therefore, Tilson has taught that multiple regions along the device can have stiffer or softer regions depending on the insertion path of the device.)
It would have been obvious before the effective filing date of the claimed invention to include the deformable second region such as that taught by Tilson in order to prevent the endoscope from looping which can cause damage within the colon (Tilson [0003]).
Allowable Subject Matter
Claims 6-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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 does not disclose the interlayer as described in Applicant’s claim 6. Specifically, Tilson is the closest piece of prior art showing an interlayer in Element 4399a, but does not disclose that this interlayer comes into contact with shape-deformable body in the second state so that the first region becomes stiff.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JAMES CAREY whose telephone number is (571)270-7235. The examiner can normally be reached Monday-Friday (8am-5pm).
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, 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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/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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