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 .
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 2-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsumoto (US Patent Application Publication No. 2006/0111612).
In regard to claim 2, Matsumoto discloses an endoscope (10, Fig. 1) comprising:
an elongated shaft (12) defining a central axis and having an outer peripheral wall extending to a distal tip (19) of the elongated shaft wherein the outer peripheral wall terminates at a continuous edge surrounding an interior volume (lumen of channel tube (46)) extending through the elongated shaft (see annotated Fig. 12 below), the distal tip of the elongated shaft including a first portion defining a first area lying within a first plane that forms a non-perpendicular angle relative to the central axis of the elongated shaft (see annotated Fig. 2 below), a second portion defining a second area lying within a second plane that is perpendicular to the central axis of the elongated shaft (see annotated Fig. 2 below), and first and second transition portions interconnecting the first and second portions of the distal tip of the elongated shaft on opposed first and second sides of the distal tip of the elongated shaft, respectively (see annotated Fig. 15 below);
the interior volume extending through the elongated shaft, wherein a first portion of the interior volume terminates coplanarly with the first portion of the distal tip of the elongated shaft and fully occupies the first area, wherein a second portion of the interior volume terminates coplanarly with the second portion of the distal tip of the elongated shaft and partially occupies the second area, and wherein a third portion of the interior volume terminates between the first and second transition portions of the distal tip of the elongated shaft (Fig. 2 illustrates the interior family having the first, second and third portions as claimed); and
a visualization conduit (via conduit housing image fiber (56), Fig. 2) extending through the elongated shaft, the visualization conduit optically exposed coplanarly with the second plane such that a viewing angle through the visualization conduit is parallel to the central axis (Fig. 2).
In regard to claim 12, Matsumoto discloses an endoscope (10, Fig. 1) comprising:
an elongated shaft (12) defining a central axis and having an outer peripheral wall extending to a distal tip (19) of the elongated shaft wherein the outer peripheral wall terminates at a continuous edge surrounding first and second interior volumes (first interior volume being lumen of channel tube (46) and second interior volume being volume through which illumination optics (71,72) extends through) extending through the elongated shaft (see annotated Fig. 12 below), the distal tip of the elongated shaft including a first portion that terminates to define a first area within a first plane disposed at a non-perpendicular angle relative to the central axis of the elongated shaft (see annotated Fig. 2 below), a second portion that terminates to define a second area within a second plane disposed at a perpendicular angle relative to the central axis of the elongated shaft (see annotated Fig. 2 below), and first and second transition portions interconnecting the first and second portions of the distal tip of the elongated shaft (see annotated Fig. 15 below);
the first interior volume extending through the elongated shaft (Fig. 2), the first interior volume terminating coextensively with the distal tip of the elongated shaft to fully occupy the first area and partially occupy the second area (Fig. 2); and
the second interior volume extending through the elongated shaft, the second interior volume separate from the first interior volume and terminating coextensively with the distal tip of the elongated shaft to partially occupy a portion of the second area not occupied by the first interior volume (Figs. 7-11).
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In regard to claim 3, Matsumoto teaches wherein the interior volume is defined by a channel (46) disposed within the elongated shaft (Fig. 2).
In regard to claim 4, Matsumoto teaches wherein the visualization conduit is separate from the interior volume (Fig. 2).
In regard to claim 5, Matsuomoto teaches further comprising an additional interior volume (via volume through which illumination optics (71,72) extends through)) extends) extending through the elongated shaft and separate from the interior volume (Figs. 7-11).
In regard to claim 6, Matsumoto teaches wherein the additional interior volume is separate from the visualization conduit (Figs. 7-11).
In regard to claim 7, Matsumoto teaches further comprising first and second additional interior volumes (first and second volumes that house fibers (71,72)) extending through the elongated shaft, the first and second additional interior volumes separate from the interior volume and disposed on opposing sides of the visualization conduit (Figs. 7-11).
In regard to claim 8, Matsumoto teaches wherein the first plane forms an angle of from 20 degrees to 40 degrees relative to the central axis (Par. 67).
In regard to claim 9, Matsumoto teaches wherein the first portion of the distal tip of the elongated shaft defines a curvature (Fig. 11).
In regard to claim 10, Matsumoto teaches wherein the second portion of the distal tip of the elongated shaft defines a curvature (Fig. 11).
In regard to claim 11, Matsumoto teaches wherein the first and second transition portions of the distal tip of the elongated shaft define curvatures (Fig. 11).
In regard to claim 13, Matsumoto teaches further comprising a visualization conduit(via conduit housing image fiber (56), Fig. 2) extending through the elongated shaft, the visualization conduit separate from the first interior volume (Fig. 2).
In regard to claim 14, Matsumoto teaches wherein the visualization conduit is optically exposed coplanarly with the second plane of the distal tip of the elongated shaft (Fig. 2).
In regard to claim 15, Matsumoto teaches further comprising a third interior volume (via volume through which illumination optics (71,72) extends through)) extending through the elongated shaft (Figs. 7-11).
In regard to claim 16, Matsumoto teaches wherein the second and third interior volumes are disposed on opposing sides of the visualization conduit (Figs. 7-11).
In regard to claim 17, Matsumoto teaches further comprising a light fiber bundle (72) disposed within the second interior volume (Figs. 7-11).
In regard to claim 18, Matsumoto teaches wherein the first plane forms an angle of from 20 degrees to 40 degrees relative to the central axis (Par. 67).
In regard to claim 19, Matsumoto teaches wherein the first portion of the distal tip of the elongated shaft defines a curvature (Fig. 11).
In regard to claim 20, Matsumoto teaches wherein the second portion of the distal tip of the elongated shaft defines a curvature (Fig. 11).
In regard to claim 21, Matsumoto teaches wherein the first and second transition portions of the distal tip of the elongated shaft define curvatures (Fig. 11).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,096,913 (hereinafter ‘913) in view of Matsumoto (US Patent Application Publication No. 2006/0111612).
Claims 1-20 of ‘913 teach all of the limitations of Claims 2-21 of the present application except for “an elongated shaft defining a central axis and having an outer peripheral wall extending to a distal tip of the elongated shaft wherein the outer peripheral wall terminates at a continuous edge surrounding an interior volume extending through the elongated shaft” in Claim 2 and “an elongated shaft defining a central axis and having an outer peripheral wall extending to a distal tip of the elongated shaft wherein the outer peripheral wall terminates at a continuous edge surrounding first and second interior volumes extending through the elongated shaft” in Claim 12.
Matsumoto teaches an analogous endoscope comprising a distal tip (19) defining a first interior space (46) running therethrough as well as an interior space through which illumination means (71,72) extends therethrough. Annotated Fig. 12 below illustrates that a continuous edge of an outer peripheral wall surrounds the first and second interior volumes. It would’ve been obvious to one of ordinary skill in the art at the time of the invention to provide the shaft of ‘913 with the continuous edge of the peripheral wall of Matsuomoto as a matter of design choice to provide a sloped portion within the distal tip forming a guide paddle to aid insertion of the endoscope shaft within a body cavity and further enabling the working channel to extend through the sloped portion enabling increased range of motion of instruments exiting the working channel.
Response to Arguments
Applicant's arguments filed 8/19/2026 have been fully considered but they are not persuasive.
Applicant argues “As demonstrated above, Matsumoto discloses a protrusion 32 defining a distal face 33 and a slope portion defining a channel port 41. However, Matsumoto does not teach or suggest "an elongated shaft defining a central axis and having an outer peripheral wall extending to a distal tip of the elongated shaft wherein the outer peripheral wall terminates at a continuous edge surrounding an interior volume extending through the elongated shaft" wherein the interior volume includes the first and second portions as recited in independent claim 2. (Emphasis added.)”
The examiner disagrees since as illustrated in annotated Fig. 12 below an outer peripheral wall terminates at a continuous edge which surrounds an interior volume extending through the shaft.
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Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN N HENDERSON whose telephone number is (571)270-1430. The examiner can normally be reached Monday-Friday 6am-5pm (PST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan Nguyen can be reached at 571-272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN N HENDERSON/Primary Examiner, Art Unit 3795 September 1, 2026
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