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 .
Response to Amendment
Applicant’s reply, filed July 10, 2026, had elected Group I but listed only Claims 1-11 & 14-17 as the elected claims. Examiner called attorney of record Elton Dean on July 31, 2026, to confirm that Claim 19 was erroneously unelected. Elton Dean confirmed that Claim 19 should have been included in the election of Group I. As such, Applicant’s election, detailed below, includes Claim 19.
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-11, 14-17 & 19, in the reply filed on July 10, 2026 is acknowledged.
As such, Claims 26-27 & 34-36 are withdrawn.
Disposition of Claims
Claims 1-11, 14-17, 19, 26-27 & 34-36 are pending.
Claims 1-11, 14-17 & 19 are rejected.
Claims 26-27 & 34-36 are withdrawn.
Claims 12-13, 18, 20-25, 28-33 & 37-41 are canceled.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation is:
"a deployment mechanism... caus[ing] the folding section to rotate about the folding axis" in Claim 1, as described in Para. [0061] of Applicant’s specification.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(b)
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 4, 6, 9-11, 15-17 & 19 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.
Regarding Claim 4, Claim 4 recites the limitation “wherein the folding axis is defined by a [singular] pin such the folding section rotates about the [singular] pin” on Lines 1-2. Claim 4 further recites “wherein the folding section includes one or more knuckles and the elongated section includes one or more knuckles [emphasis added]” and “the one or more knuckles of the folding section and the one or more knuckles of the elongated section having the [singular] pin therethrough” on Lines 2-4 & Lines 5-6, respectively. It is unclear how a singular pin can be inserted therethrough of at minimum two knuckles (i.e., one knuckle of the folding section and one knuckle of the elongated section). In light of Applicant’s specification and for the purpose of examination, “wherein the folding axis is defined by a pin such the folding section rotates about the pin” and “the one or more knuckles of the folding section and the one or more knuckles of the elongated section having the pin therethrough” are being interpreted as “wherein the folding axis is defined by a first pin such the folding section rotates about the first pin” and “the one or more knuckles of the folding section and the one or more knuckles of the elongated section having a respectively pin, including the first pin, therethrough”, respectively.
Regarding Claims 6 & 19, the term “approximately” is a relative term which renders the claim indefinite. The term “approximately” 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. For the purpose of examination, “wherein the fold-axis angle is approximately 45 degrees” (Claim 6) and “oriented at approximately a 45-degree angle” (Claim 19) are being interpreted as “wherein the fold-axis angle is 45 degrees ± 15 degrees” and “oriented at a 45-degree angle ± 15 degrees”, respectively.
Regarding Claims 9-10 & 15-17, the term “generally” is a relative term which renders the claim indefinite. The term “generally” 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. For the purpose of examination, “generally perpendicular” (Claims 9 & 15), “generally coplanar” (Claim 10), “generally circular” (Claim 16) and “generally parallel” (Claim 17) are being interpreted as “perpendicular ± 15 degrees”, “coplanar ± 15 degrees”, “circular or ovoid” and “parallel ± 15 degrees”, respectively.
Regarding Claim 11, Claim 11 recites the limitation “wherein the longitudinal axis of the first folding section [emphasis added]” on Lines 1-2. There is insufficient antecedent basis for this limitation in the claims. For the purpose of examination, “wherein the longitudinal axis of the first folding section” is being interpreted as “wherein a longitudinal axis of the first folding section [emphasis added]”.
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.
Claims 1-11, 14-17 & 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hrayr et al. (hereinafter "Hrayr") (US 2014/0088361).
Regarding Claim 1, Hrayr discloses a periscope device (Fig. 1, 100; [0068]), the periscope device comprising:
an elongated body (Figs. 1 & 3B, an insertion portion comprising 102/302, 106/306 and 108/308B; [0068] & [0080]) defining a longitudinal axis (Fig. 1, a longitudinal axis comprising LA and LAI; [0068]) and having a proximal end (Fig. 1, 102B; [0068]), a distal end (Fig. 1, 106A; [0068]), and an outer surface (see Fig. 1), the elongated body configured to be inserted into a working lumen of a duodenoscope (the insertion portion of 100 would be capable of being inserted into a working lumen of a duodenoscope);
a folding section of the elongated body (Figs. 1 & 3B, 106/306; [0080]), the folding section configured to rotate about a folding axis (Figs. 1, 3B & 4A, LnA of 106B/311C; [0068], [0080] & [0081]);
a mirror (Fig. 1, a mirror of 150; [0077]) coupled to the folding section of the elongated body (Fig. 1, 106 contains 150 which contains the mirror; [0068] & [0077]); and
a deployment mechanism (Fig. 1, 104; [0068]) coupled to the proximal end of the elongated body ([0068]),
wherein deploying the deployment mechanism causes the folding section to rotate about the folding axis ([0074]).
Regarding Claim 2, Hrayr discloses the periscope device of Claim 1. Hrayr further discloses wherein the folding axis defines an elongated section of the elongated body (Figs. 1 & 3B, a flexible section comprising 102/302 and 108/308B; [0068] & [0080]), the elongated section extending from the proximal end of the elongated body to the folding axis (the flexible section extends between 102B to LnA of 106B/311C; see Figs. 1, 3B & 4A), the folding section extending from the distal end of the elongated body to the folding axis (106/306 extends between LnA of 106B/311C and 106A; see Figs. 1, 3B & 4A).
Regarding Claim 3, Hrayr discloses the periscope device of Claim 2. Hrayr further discloses wherein the elongated section is constructed of a flexible material ([0011]) and the folding section is constructed of a rigid or semi-rigid material ([0071]).
Regarding Claim 4, Hrayr discloses the periscope device of Claim 2. Hrayr further discloses wherein the folding axis is defined by a pin (Fig. 4A, 418; [0071] & [0081]) such that the folding section rotates about the pin ([0081]), wherein the folding section includes one or more knuckles (Fig. 3B, 311C; [0080]) and the elongated section includes one or more knuckles (Fig. 3B, 311A & 311B; [0080]), the one or more knuckles of the folding section corresponding to the one or more knuckles of the elongated section (See Fig. 3B), the one or more knuckles of the folding section and the one or more knuckles of the elongated section having the pin therethrough (Figs. 3B & 4A, 311A has a first 418, 311B has a second 418 and 311C has a third 418; [0080] & [0081]).
Regarding Claim 5, Hrayr discloses the periscope device of Claim 2. Hrayr further discloses wherein the deployment mechanism is configured to cause the folding section to rotate about the folding axis to an angle of rotation with respect to the elongated section, wherein the angle of rotation is between 0-degrees and 180-degrees (Fig. 3B, 311C of 308B has a RoM of 30°; [0080]).
Regarding Claim 6, Hrayr discloses the periscope device of Claim 2. Hrayr further discloses wherein the folding axis defines a fold-axis angle with respect to the longitudinal axis of the elongated body, wherein the fold-axis angle is approximately 45-degrees ([0104]).
Regarding Claim 7, Hrayr discloses the periscope device of Claim 1. Hrayr further discloses wherein the folding section is a first folding section and the folding axis is a first folding axis, the periscope device further comprising a second folding section (Fig. 3B, 311B; [0080]) configured to rotate about a second folding axis (Figs. 3B & 4A, LnA of 311B; [0080] & [0081]), wherein deploying the deployment mechanism causes the second folding section to rotate about the second folding axis ([0074]).
Regarding Claim 8, Hrayr discloses the periscope device of Claim 7. Hrayr further discloses a third folding section (Fig. 3B, 311A; [0080]) configured to rotate about a third folding axis (Figs. 3B & 4A, LnA of 311A; [0080] & [0081]), wherein deploying the deployment mechanism causes the third folding section to rotate about the third folding axis ([0074]).
Regarding Claim 9, Hrayr discloses the periscope device of Claim 8. Hrayr further discloses wherein the first folding axis, the second folding axis, and the third folding axis are each generally perpendicular to the longitudinal axis of the elongated body (see Fig. 3B).
Regarding Claim 10, Hrayr discloses the periscope device of Claim 8. Hrayr further discloses wherein a longitudinal axis of the first folding section is generally coplanar with a longitudinal axis of the second folding section ([0080]), wherein the longitudinal axis of the second folding section is generally coplanar with a longitudinal axis of the third folding section ([0080]).
Regarding Claim 11, Hrayr discloses the periscope device of Claim 8. Hrayr further discloses wherein the longitudinal axis of the first folding section is perpendicular to a longitudinal axis of an optical lens of the duodenoscope (a longitudinal axis of 106/306 would be capable of being perpendicular to a longitudinal axis of an optical lens of a duodenoscope).
Regarding Claim 14, Hrayr discloses the periscope device of Claim 1. Hrayr further discloses wherein the deployment mechanism causes the elongated body to transition from an undeployed position (a straight/neutral position; see solid line portions of 106 of Fig. 1) to a deployed position (a rotated position; see dotted line portions of 106 of Fig. 1), wherein the periscope device does not obstruct a side-facing view from an optical lens of the duodenoscope when the periscope device is in the undeployed position (when in the straight/neutral position, 100 would be capable of not obstructing a side-facing view of an optical lens of a duodenoscope), wherein the folding section reflects the side-facing view from the optical lens to provide a forward-facing view when the periscope device is in the deployed position (when in the rotated position, 106/306 of 100 would be capable of reflecting a side-facing view of an optical lens of a duodenoscope to provide a forward-facing view).
Regarding Claim 15, Hrayr discloses the periscope device of Claim 14. Hrayr further discloses wherein a longitudinal axis of the forward-facing view is generally perpendicular to a longitudinal axis of the optical lens (when in the rotated position, 106/306 of 100 would be capable of reflecting a side-facing view of an optical lens of a duodenoscope to provide a forward-facing view wherein the forward-facing view could be perpendicular to a longitudinal axis of the optical lens).
Regarding Claim 16, Hrayr discloses the periscope device of Claim 2. Hrayr further discloses wherein the elongated body has a generally circular cross section (see Fig. 1), wherein the folding section and the elongated section each include a recess to accommodate rotation of the folding section about the folding axis (see Fig. 3B).
Regarding Claim 17, Hrayr discloses the periscope device of Claim 1. Hrayr further discloses a light source coupled to the folding section ([0116]), the light source defining a longitudinal axis ([0117]), wherein the longitudinal axis of the light source is generally parallel to a longitudinal axis of the duodenoscope after the folding section rotates about the folding axis (a longitudinal axis of the illumination system would be capable of begin substantially parallel to a longitudinal axis of a duodenoscope after 106/306 rotates about LnA of 106B/311C).
Regarding Claim 19, Hrayr discloses the periscope device of Claim 1. Hrayr further discloses wherein the folding axis of the elongated body is oriented at approximately a 45-degree angle with respect to the longitudinal axis of the elongated body ([0104]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2023/0371795; US 2021/0052145; U.S. 10,335,022; US 2018/0153641; US 2016/0302651; US 2016/0157842; US 2016/0029902; US 2012/0059361; US 2011/0306832; US 2011/0295061; US 2009/0187072; U.S. 7,475,998; US 2006/0149129; US 2006/0015126; U.S. 6,050,939; U.S. 5,636,918 and U.S. 4,872,838.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN FLOYD LONDON whose telephone number is (571)272-4478. The examiner can normally be reached Monday - Friday: 10:00 am ET - 6:00pm ET.
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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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/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795
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