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 with traverse of Species 1a (Figs. 5-6) and 2a (Fig. 5) in the reply filed on 03/20/2026 is acknowledged. The traversal is on the ground(s) that the species all have the common technical feature of “a thickness of the first distal end portion in a radial direction is greater than a thickness of the second distal end portion in the radial direction” (see Remarks at pages 1-2). This is not found persuasive because Applicant bases its argument a there being a common technical feature among the claims. However, application of a common technical feature to establish unit of invention applies to claims in a Patent Cooperation Treaty (PCT) application. As is clear, this application is neither a PCT application nor a National Stage Application (35 U.S.C. 371). Accordingly, unity of invention does not apply.
The requirement is still deemed proper and is therefore made FINAL. Claims 1-4 and 9-10 read on the elected species. Claims 1-18 are presently pending in the application with claims 5-8 and 11-18 withdrawn from consideration. Claims 1-4 and 9-10 are examined below.
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 and 9-10 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. Independent claim 1 recites, in pertinent part, an imaging unit; a signal cable extending from the imaging unit; and a protective member. The specification, as originally filed, however, recites “[t]he imaging unit 30 has an imaging element 31, an imaging board 32, a signal cable 34, and a protective member 36” (see par. [0054] of the published application). As is clear from the above disclosure, both the signal cable and protective member are components of the claimed imaging unit. It is not clear if Applicant intends to claim an additional signal cable and protective member that are separate from the imaging unit, if the Applicant intended to claim the imaging element instead of the imaging unit, or something else. Further, it is unclear how the signal cable extends from the imaging unit, or what specific component it extends from. For purposes of examination, the limitation regarding the signal cable is interpreted as a distal end of the signal cable facing the proximal end of the imaging board. Appropriate correction is required.
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.
Claim(s) 1-3 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagamizu (US 2019/0110664 A1).
Regarding claim 1, Nagamizu discloses an endoscope (Fig. 1) comprising: an imaging unit (33/42/50/80; Fig. 2; par. [0049] and [0058]); and a holding frame (32/41/45/46; Fig. 2; par. [0050]-[0052]) having a tubular shape, holding the imaging unit (33/42/50/80), a signal cable (70; par. [0055]) extending from the imaging unit (Fig. 2), and a protective member (86; Figs. 6-7; par. [0065]-[0066]) having a tubular shape (Fig. 7), surrounding the signal cable (Figs. 6-7), and extending in the optical axis direction (Fig. 6), wherein a distal end of the protective member (86; Fig. 6) faces the holding frame (32/41/45/46) in the optical axis direction (Figs. 2 and 6) and is adhered to the holding frame (par. [0066] – 86 is connected to 45), wherein a distal end portion of the protective member (86) which is a portion on an object side including the distal end has a first distal end portion (86b; Fig. 7; par. [0067]) and a second distal end portion (Fig. 7 - portion of 86 opposite 86b), wherein the first distal end portion (86b) is a part of the distal end portion in a circumferential direction (Fig. 7), and the second distal end portion (Fig. 7 - portion of 86 opposite 86b) is another part of the distal end portion in the circumferential direction (Fig. 7), and wherein a thickness of the first distal end portion in a radial direction is greater than a thickness of the second distal end portion in the radial direction (Figs. 6-7; 86b of the first distal end portion projects outwardly relative to the second distal end portion).
Regarding claim 2, Nagamizu discloses the endoscope according to claim 1, further comprises an imaging board (50; par. [0052]) is disposed in the holding frame (32/41/45/46; Fig. 2), and wherein an end portion (80; Fig. 2; par. [0053]) of the signal cable (70; Fig. 2; par. [0053]) on the object side is joined to the imaging board (50; Fig. 2).
Regarding claim 3, Nagamizu discloses the endoscope according to claim 2, wherein the holding frame (32/41/45/46) has an opening portion (interior of 45/46; Fig. 2) that is open on a proximal end side (Fig. 2), and wherein the signal cable (70/80) is inserted into the holding frame (32/41/45/46) through the opening portion (par. [0053]; Fig. 2).
Regarding claim 10, Nagamizu discloses the endoscope according to claim 1, wherein each of the holding frame (32/41/45/46) and the protective member (86) has a tubular shape centered on a central axis (Figs. 1 and 2), and wherein, when viewed in the optical axis direction, a difference between a minimum distance between the central axis and an inner surface of the protective member (Fig. 2 – central axis to inner surface of 86) and a minimum distance between the central axis and an inner surface of the holding frame (Fig. 2 – central axis to inner surface of 46 that is disposed on 71) is less than or equal to the thickness of the second distal end portion in the radial direction (Fig. 7).
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.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagamizu, as applied to claim 1 above.
Regarding claim 9, Nagamizu discloses the endoscope according to claim 1, but does not specifically disclose wherein the protective member is adhesively fixed to the signal cable. At the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art to adhesively fix the protective member to the signal cable because Applicant has not disclosed that fixing via adhesive provides an advantage, is used for a particular purpose, or solves a stated problem. Moreover, Applicant explicitly states that the protective member does not have to be fixed by adhesive to the signal cable (see par. [0058] of the published application). One of ordinary skill in the art, furthermore, would have expected Nagamizu’s endoscope, and applicant’s invention, to perform equally well with either the connection taught by Nagamizu or the claimed adhesive connection because both connection mechanisms would perform the same function of connecting the protective member to the signal cable. Therefore, it would have been prima facie obvious to modify Nagamizu to obtain the invention as specified in claim 9 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Nagamizu.
Allowable Subject Matter
Claim 4 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims. The prior art of record does not specifically disclose, or otherwise render obvious, the claimed endoscope wherein the protective member is made by forming a sheet member having a sheet shape and extending in the optical axis direction into a tubular shape, and wherein the first distal end portion is a portion of the distal end portion in which portions of the sheet member overlap each other in the radial direction, in combination with the other elements of the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kojima US 2021/0389581 A1 Image Pickup Apparatus for Endoscope…
Sakamoto US 2020/0405136 A1 Endoscope
Kibayashi US 2013/0027534 A1 Image Pickup Apparatus
Wataya JP 2015-062555 A Endoscope
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/RYNAE E BOLER/Examiner, Art Unit 3795
/ANH TUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
6/3/26
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