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
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, 14, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Levy (US 20170280969 A1).
As to claim 1, Levy discloses:
An apparatus (Fig. 39-40) comprising:
an objective lens system 39132 (par. 0732) mounted in a distal end of the apparatus, the objective lens system having a lengthwise axis.
a window 3936 (par. 0732) mounted in a distal face of the apparatus, the window having a surface (outer surface is flat, inner surface is angled/curved and flat) oriented at an angle (90 degrees for flat portions, other angles for curved surface) to the lengthwise axis (vertical axis in Fig. 39A) of the objective lens system, wherein the window reflects light out of a field of view of the objective lens system (all materials will reflect some percentage of some spectrum of light at some angle due to the material property of reflectance, thus some percentage of incoming light will be reflected away from the exterior surface of the flat window material, and never enter the objective lens system or its field of view).
As to claim 14, Levy discloses:
wherein the surface of the window is not coated with a coating material (no additional coating is disclosed, merely a protective window; par. 0732).
As to claim 18, Levy discloses:
wherein the apparatus is a zero-degree endoscope (zero-degree tip angle at the top surface of window 3936 and device 3900; see Fig. 39A).
Claim Rejections - 35 USC § 103
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) 2 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Levy (US 20170280969 A1) as applied to claim 1 above, and further in view of Barbato (US 20170280988 A1).
As to claim 2, Levy does not disclose:
wherein the angle is twelve degrees.
However, Barbato discloses:
wherein the angle (between the lengthwise axis of the lens 1652, 1654, 1660 and the window1650; Fig. 16) is twelve degrees (between five and forty-five degrees; par. 0103).
in order to view at an angle different than the endoscope axis (par. 0103).
It would have been obvious to one of ordinary skill in the related art(s) before the effective filing date of the claimed invention to modify the device of Levy as suggested by Barbato, e.g., providing:
wherein the angle is twelve degrees;
in order to view at an angle different than the endoscope axis.
It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
It has also been held that discovering an optimum value of a result-effective variable (e.g., the relative angles between the window and lens for effecting the desired results of viewing angle) involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Additionally, all claimed elements were known in the prior art and one skilled in the art could have combined/modified the elements as claimed by known methods with no change in their respective functions, and the combination/modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
As to claim 13, Levy does not disclose:
wherein the angle is between one degree to forty-five degrees.
However, Barbato discloses:
wherein the angle (between the lengthwise axis of the lens 1652, 1654, 1660 and the window1650; Fig. 16) is between one degree to forty-five degrees (between five and forty-five degrees; par. 0103);
in order to view at an angle different than the endoscope axis (par. 0103).
It would have been obvious to one of ordinary skill in the related art(s) before the effective filing date of the claimed invention to modify the device of Levy as suggested by Barbato, e.g., providing:
wherein the angle is between one degree to forty-five degrees;
in order to view at an angle different than the endoscope axis.
It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
It has also been held that discovering an optimum value of a result-effective variable (e.g., the relative angles between the window and lens for effecting the desired results of viewing angle) involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Additionally, all claimed elements were known in the prior art and one skilled in the art could have combined/modified the elements as claimed by known methods with no change in their respective functions, and the combination/modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Levy (US 20170280969 A1) as applied to claim 1 above, and further in view of Scott (US 20100261961 A1).
As to claim 17, Levy does not disclose: wherein the window is made of sapphire.
However, Scott discloses:
wherein the window 206 is made of sapphire (par. 0052, 0066);
in order to provide a scratch-, heat-, moisture-, and solvent-resistant material that is also transparent to a range of wavelengths of light (par. 0066) and can survive sterilization in an autoclave (par. 0052).
It would have been obvious to one of ordinary skill in the related art(s) before the effective filing date of the claimed invention to modify the device of Levy as suggested by Scott, e.g., providing:
wherein the window is made of sapphire;
in order to provide a scratch-, heat-, moisture-, and solvent-resistant material that is also transparent to a range of wavelengths of light and can survive sterilization in an autoclave.
Additionally, all claimed elements were known in the prior art and one skilled in the art could have combined/modified the elements as claimed by known methods with no change in their respective functions, and the combination/modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Allowable Subject Matter
Claims 3-12 and 15 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
As to claims 3-12 and 15, the allowability resides in the overall structure and functionality of the apparatus as recited in the dependent claims 3 and 15, for identical reasons as provided in the previous Office Action.
Further, Examiner has not identified any double patenting issues.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed 7/27/2026 have been fully considered but they are not persuasive.
Claimed Elements Not Taught
Applicant has suggested that claim 1 incorporates allowable subject matter from previous claim 16.
In response, Examiner notes that claim 1 does not include allowable subject matter from claim 16, because it does not refer to or require “reflects light that passes the through the window back towards the window” (from parent claim 15). Claim 1 merely recites “wherein the window reflects light out of a field of view of the objective lens system”, which includes any light reflected from any surface of the window.
Conclusion
Applicant's amendment necessitated any 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 JACOB R CRUM whose telephone number is (571)270-7665. The examiner can normally be reached Monday - Friday 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash Gandhi can be reached on (571) 270-1985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB R CRUM/Primary Examiner, Art Unit 2841
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