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 election without traverse of Invention I – Species A (directed to Figs. 1-22 and disclosed in paragraphs [0008-0073]) in reply filed 06/10/2026 is acknowledged.
Response to Amendment
The amendment filed 06/10/2026 has been entered. Claims 1-20 are currently pending in the application. Claims 11-20 have been amended. Claims 7-8 and 11-20 have been withdrawn as they are directed to non-selected inventions and species. Claims 1-6 and 9-10 are examined below.
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(s) 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(s) is/are:
Field-of-view direction changing unit, in claim 1, which has structural support in paragraph [0009] of Applicant’s specification stating, “As shown in Fig. 2, the electric scope 3 includes an elongated insertion portion (elongated portion) 13 to be inserted into a body cavity of the patient, a camera (imaging optical system) 15 provided at a tip portion of the insertion portion 13, a curved part (field-of-view direction changing unit) 17 which causes an inclination angle of an endoscopic field of view of the camera 15 relative to a longitudinal axis of the insertion portion 13 to change, and a curved motor which drives the curved part 17 and a roll motor which rolls and rotates the insertion portion 13 around the longitudinal axis (both motors not illustrated).”
Input unit, in claim 10, which has structural support in paragraph [0017] of the specification stating, “In addition, a headset (input unit) 35, a hand switch (input unit) 37, a foot switch (input unit) 39, and the like are connected as various user interfaces (UIs) to the control apparatus 7. The headset 35 enables an operator to input an endoscope operation command, an operation switchover command, and the like by voice. The endoscope operation command, the operation switchover command, and the like inputted from the headset 35 are sent to the position/attitude controller 25 via the voice recognition unit 33.”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are 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/these limitation(s) 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(s) to avoid it/them 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(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-10 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.
Claim 1 recites the limitation “each piece of library data” twice in lines 9 and 14, respectively. It is unclear whether the library data introduced in lines 9 and 14 is 1.) introducing one new and distinct piece of library data that is new and distinct from the plurality of pieces of library data previously introduced in line 8, 2.) referencing one specific piece of library data within the plurality of pieces of library data previously introduced in line 8, 3.) introducing two separate individual pieces of library data that are new and distinct from the plurality of pieces of library data previously introduced in line 8, or 4.) introducing two separate individual pieces of library data that are within the plurality of pieces of library data previously introduced in line 8. As such, claims 2-10 are also rejected because of their dependency on a rejection base claim 1. Appropriate correction is required.
Claim 1 recites the limitation "the relative parameter" in line 18. There is insufficient antecedent basis for this limitation in the claim. It is suggested to amend the limitation to state, “the at least one relative parameter.” As such, claims 2-10 are also rejected because of their dependency on a rejection base claim 1. Appropriate correction is required.
Claim 1 recites the limitation "the library data" in line 25. There is insufficient antecedent basis for this limitation in the claim. It is suggested to amend the limitation to state, “the plurality of pieces of library data.” As such, claims 2-10 are also rejected because of their dependency on a rejection base claim 1. Appropriate correction is required.
Claim 1 recites the limitation "the called library data" in line 27. There is insufficient antecedent basis for this limitation in the claim. As such, claims 2-10 are also rejected because of their dependency on a rejection base claim 1. Appropriate correction is required.
Claim 2 recites the limitation "the specified procedural scene" in line 4. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 3 recites the limitation "the relative parameter" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested to amend the limitation to state, “the at least one relative parameter.” Appropriate correction is required.
Claim 4 recites the limitation "the relative parameter" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested to amend the limitation to state, “the at least one relative parameter.” 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 and 9-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Brian Ninni (US2022/0202273) hereinafter Ninni.
Regarding Claim 1, Ninni discloses an endoscope system (Figs. 1-7C system 1000) comprising:
an endoscope (Figs. 1-7C handle 200 and steerable catheter 110, [0030, 0037-0039]) that comprises an imaging optical system (Figs. 1-7C imaging device 180) for photographing an observation object ([0048]);
an electric arm (Figs 1-2a robotic platform 90) that changes a position and an attitude of the endoscope ([0033] “The robotic platform 90 includes a one or more robotic arms 92 and translation stage 91.”)while supporting the endoscope (Figs. 1-7C handle 200 and steerable catheter 110);
a field-of-view direction changing unit (Figs. 2a-b middle section 102, Examiner’s Note: As previously stated above the field-of-view direction changing unit is being interpreted as the ‘curved part’ on the endoscope insertion section. Here Ninni, discloses the ‘curved part’ of the endoscope is in the steerable section 102 and 101.) capable of changing a field-of-view direction of the endoscope (Figs. 1-7C handle 200 and steerable catheter 110);
a storage apparatus (Fig. 2a memory 411) that stores a plurality of pieces of library data for realizing an endoscopic field of view, each piece of library data being associated with each procedural scene ([0035] “During an endoscopy procedure, the system's processor or CPU 410 is configured to perform operations based on computer-executable code pre-stored in the system's memory 411.); and
at least one processor (Figs. 2a system’s processor or CPU 410) comprising hardware,
wherein:
the endoscope (Figs. 1-7C handle 200 and steerable catheter 110) comprises an elongated portion (Figs. 1-7C steerable catheter 110) in which the imaging optical system (Figs. 1-7C imaging device 180) is arranged at a tip portion (Figs. 2a-b distal section 101) thereof,
each piece of library data comprises at least one relative parameter related to a relative position and a relative attitude between the imaging optical system and the observation object (Fig. 3 steps S306-S312, [0006] “The catheter has one or more than one tool channel, and is configured to receive an actuating force from the actuator unit to navigate the steerable section of the catheter through the lumen. The actuation force is transmitted from the actuator to the steerable section via one or more drive wires. A tracking system comprising at least one sensor is configured to establish a positional relation (position and orientation) between the catheter and a reference target located in a region of interest near a distal end of the catheter. A processor in communication with the actuator and with the at least one sensor, and a memory storing computer-executable instructions are configured to cause the processor to: determine, based on data from the at least one sensor, a position and orientation of a distal end of the steerable section of the catheter with respect to the reference target”),
the relative parameter comprises at least one of a first parameter or a second parameter, the first parameter being determined by a sum of an inclination of a longitudinal axis of the elongated portion and an amount of curvature of the field-of-view direction changing unit on base coordinates, the first parameter being related to an orientation of the imaging optical system on the base coordinates, the second parameter indicating an orientation of the imaging optical system as viewed from a coordinate of the observation object (Fig. 3 steps S306-S312, [0034] “A tracking system (comprising an electromagnetic (EM) field generator 60 and one or more EM sensors 190 arranged on the steerable catheter 110) is used for tracking the position, shape, and/or orientation of the steerable catheter 110 while being inserted through a bodily lumen 81 towards a lesion 181.”, and
the processor is configured to call the library data associated with any procedural scene from the storage apparatus (Fig. 3 steps S306-S312),, and subsequently control at least one of the field-of-view direction changing unit or the electric arm based on the called library data(Fig. 3 step S322)
Regarding Claim 2, Ninni discloses the endoscope system according to claim 1, wherein the processor (Figs. 2a system’s processor or CPU 410) is configured to specify the procedural scene by processing image information acquired by the imaging optical system (Fig. 3 step S300-S310), and subsequently call the library data associated with the specified procedural scene from the storage apparatus ([0051-0054]).
Regarding Claim 3, Ninni discloses the endoscope system endoscope system according to claim 1, wherein: the relative parameter is distance information between the imaging optical system and the observation object, and the processor is configured to match a distance between the imaging optical system and the observation object as calculated from image information acquired by the imaging optical system with the distance information by controlling at least one of the field- of-view direction changing unit or the electric arm ([0046] “The trajectory information is stored in a memory of the system and continuously updated as the steerable instrument is manipulated inside the lumen 81. After a short advance in insertion distance, the shape of the steerable catheter is corrected by adjusting (twisting and/or bending) segments of the instrument in such a way that the new shape closely matches the desired trajectory. This process is repeated until a target area is reached. The same process can be applied when the steerable instrument is withdrawn from the patient. This is analogous to known navigation techniques, e.g., as described in US 2007/0135803, which is incorporated by reference herein for all purposes.”).
Regarding Claim 4, Ninni discloses the endoscope system according to claim 1, wherein: the relative parameter is orientation information of the imaging optical system with respect to the observation object, and the processor is configured to match the orientation of the imaging optical system with respect to the observation object as calculated from image information acquired by the imaging optical system with the orientation information by controlling at least one of the field-of-view direction changing unit and the electric arm ([0046, 0054-0057, 0059] Figs. 4-5a/b) .
Regarding Claim 5, Ninni discloses the endoscope system according to claim 1, wherein: the relative parameter is inclination information around an optical axis of the imaging optical system of the observation object with an elongated shape which extends in a direction orthogonal to the optical axis, and the processor is configured to match an inclination of the observation object with an elongated shape around the optical axis of the imaging optical system as calculated from image information acquired by the imaging optical system with the inclination information by controlling at least one of the field-of-view direction changing unit or the electric arm ([0046, 0054-0057, 0059] Figs. 4-5a/b) .
Regarding Claim 6, Ninni discloses the endoscope system according to claim 1, wherein the field-of-view direction changing unit is a curved part capable of changing an angle of the imaging optical system in the endoscope (Figs. 2a-b middle section 102, Examiner’s Note: As previously stated above the field-of-view direction changing unit is being interpreted as the ‘curved part’ on the endoscope insertion section. Here Ninni, discloses the ‘curved part’ of the endoscope is in the steerable section 102 and 101.) .
Regarding Claim 9, Ninni discloses the endoscope system according to claim 1, wherein the processor is configured to recognize the observation object by processing image information acquired by the imaging optical system (Fig. 3 step S306).
Regarding Claim 10, Ninni discloses the endoscope system according to claim 1, further comprising an input unit that causes a user to designate the observation object based on image information acquired by the imaging optical system ([0044] “Referring back to FIG. 2A, the handle 200 provides an electromechanical interface between the steerable instrument 100 and the robotic actuator system 300 and/or the robotic platform 90. For example the handle 200 may provide an interface for mechanical, electrical, and/or optical connections, and a data/digital connection for interfacing the steerable catheter 110 with the actuator system 300 and/or computer system 400.” Examiner’s note: As identified above, input unit is being interpreted as have a structure capable of being a hand switch. Here Ninni discloses the handle 200 provide an interface for mechanical, electrical, and/or optical connections, and a data/digital connection for interfacing the steerable catheter 110 with the actuator system 300 and/or computer system 400.)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Nir et al. (US2016/0345802);
Kikuchi et al. (US2016/0331208);
Wan Sing Ng. (US5820623).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGAN E MONAHAN whose telephone number is (571)272-7330. 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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/MEGAN ELIZABETH MONAHAN/ Examiner, Art Unit 3795
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