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 .
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 1-12 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 recites the limitation "the proximal region". There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that the claim can be clarified by indicating that the endoscope comprises a proximal region and that the imaging system is conductively connected to the proximal region of the endoscope by a circuit board.
The Examiner also notes that claim 1 includes what appears to be two transitional phrases. The endoscope does not comprise a rigid or flexible shaft tube, but rather, has a rigid or flexible shaft tube. As written, the shaft tube appears to be in the preamble and not in the body of the claim. What does Applicant intend by this. Does the endoscope comprise a rigid or flexible shaft tube or is this just a functional limitation and that is why it is in the preamble? The convention in US practice is normally preamble, transition, and then body of the claim. Here, the claim is drafted as a preamble, transition, body, transition, and body. Please clarify the intention or, more preferably, amend the claim to align with US practice. The Examiner assumes the transitional phrases are open ended.
Examiner Note: For claim 3, the Examiner recommends not using “it” as pronouns can lead to confusion. The recommendation is to replace “it” with “the rotary drum”.
Claim 8 refers to “the extension” and claim 1 refers to “at least one control extension”. The difference in terminology creates ambiguity as to how many control extensions are required (either one or one or more) and whether or not the limitation in claim 8 applies to only one extension or to any and all extensions. The Examiner assumes that any extension has the claimed material thickness. The Examiner recommends using consistent terminology throughout the claim set. Appropriate correction is required.
The term “insignificant” in claim 10 is a relative term which renders the claim indefinite. The term “insignificant” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The amount of rotation of the rotary drum that would read on the claim cannot be determined. The Examiner assumes that the relaxed state does not have any rotation. Appropriate correction is required.
Claim 11 states “wherein the rotary drum and the control extension approximate in the broadest sense an “e” shape when the rotary drum is in the relaxed state. The Examiner does not know what “in the broadest sense” means in this context. There are several issues that create uncertainty as to the scope of the claim. First, is this intended to expand the scope of the claim beyond the normal broadest reasonable interpretation standard? If so, how much broader is the limitation? Conversely, this could be intended to limit the scope of the claim. Again, if so, in what way? The other problem is that the shape of “e” is ambiguous as this could refer only to the shape in the claim accounting for the font. This could just mean a lowercase “e” regardless of the font. This could mean an “e”, upper or lowercase. There are too many variations in meaning and in shapes that this could include or exclude, the Examiner does not think a person having ordinary skill in the art could reasonably ascertain the metes and bounds of the claim. Appropriate correction is required.
Allowable Subject Matter
Claims 1-12 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 claimed combination of features. In particular, the claims require a rotary drum, a circuit board connecting the image sensor to the proximal region of the endoscope, at least one control means for moving the rotary drum, and wherein the rotary drum is designed as a single piece and has at least one control extension, wherein the control means is frictionally or integrally connected to the control extension, and linear movements of the control means are translated into a rotational movement of the rotary drum by means of an elastically deforming deflection of the control extension.
The closest prior art is Schwarz (US 2022/0175219). Schwarz discloses a similar device with a control line 32. The control line is connected to 76 on the handle. As 76 is linearly displaced, the control line also moves back and forth to rotate the drum (see Fig. 7b). There are some missing elements, however, as 32 is disclosed as being a flexible circuit board 68. As far as the Examiner can tell, these are the same element. No embodiment is disclosed with a flexible circuit board and a separate control line. Instead, a cable can be used to supply electricity (Paragraph 0067), but that cable is not used to rotate the drum. There is no indication that anything other than 32/68 is used to rotate the drum.
The claim also uses the term “control means” invoking 112(f). The disclosed means is a rod or wire member 8. Schwarz does not disclose such a member as 32 appears to go from the drum back to 76 on the handle. There is no separate means.
This highlights the problems with Schwarz as the only plausible way for it to read on the claim is for 32/68 to be both the circuit board and the control extension and the control means. Even if the flexible circuit board could be a different element, although the Examiner thinks this is not reasonable given the integrated nature of the board 68 and control line 32 such that they are the same element, there would still be no control means.
While the devices are similar, there are too many missing components in the prior art for the Examiner to consider the reference to read on the claimed invention. There being no teaching reference to address the issues, the claims overcome the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Similar devices with rotating viewing means: Hoefig et al. (US 2007/0055103); Dahmen et al. (US 2012/0123212).
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/TIMOTHY J NEAL/ Primary Examiner, Art Unit 3795