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
Applicants’ election of claims 1-15 is acknowledged. The election is considered without traverse and made final. See MPEP 818.01 (portions below) -
818.01(a) Reply Must be Complete [R-07.2015]
As indicated in the first sentence of 37 CFR 1.143, the traverse to a requirement for restriction must be complete as required by 37 CFR 1.111(b). Under this rule, the applicant is required to specifically point out the reason(s) on which he or she bases his or her conclusion(s) that a requirement to restrict is in error. A mere broad allegation that the requirement is in error does not comply with the requirement of 37 CFR 1.111. Thus the required provisional election (see MPEP § 818.01(b)) becomes an election without traverse if accompanied by an incomplete traversal of the requirement for restriction.
Claims 16-20 are withdrawn from further consideration.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/27/2025, 10/28/2024, is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-15, 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 "an end cap" in line 12. However, the detailed description does not provide a reference numeral for the end cap. Instead, the distal cap module 426 has been indicated as a cap at the distal end of the shaft. This recitation of the end cap becomes unclear because the reference numeral has not been provided in the detailed description and the end cap could be just a name of a cap positioned at a proximal end of the shaft.
For the purpose of prosecution, the “end cap” has been considered the distal end cap (or distal cap).
Appropriate correction is required.
Claim 9 recites “one or more lumens in the shaft includes a working channel, an irrigation lumen…….” Considering one lumen, the shaft could not accommodate a working channel, and an irrigation lumen in a single lumen which makes the claim unclear.
Appropriate correction is required.
Claim 13, recites “fiber for transmitting electrical signal,” in line 3. This phrase/term is unclear because fiber does not transmit electrical signals.
Appropriate correction is required.
Claims 2-15 are rejected for being dependent on a rejected base claim.
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) 1-2, 7, 9-15. is/are rejected under 35 U.S.C. 102 as being anticipated by Sonnenschein (US 20070182842).
Regarding claim 1, Sonnenschein discloses a medical device, comprising:
a shaft (insertion tube 302 includes an irrigation channel 42 which can provide a shaft, FIG. 26 annotated; ), wherein the shaft includes one or more lumens (42 provides irrigation channel; para [0083]) extending longitudinally from a proximal end of the shaft to a distal end of the shaft (channel 42 extends from proximal to distal end.);
a printed circuit board (electrical connector 24 along with signal transmission and electric power supply wires 30 in the endoscope; FIGS. 4C, 26, annotated; para [0060], [0065]), wherein the printed circuit board is flexible (FIG. 4C shows wires are planar and flexible) and is positioned around an outer surface of the shaft (In view of FIG. 4C, signal transmission and electric power supply wires 30 are around the irrigation channel 42 which has been considered as the shaft of the device. The claim does not recite that printed circuit board is wrapped around the shaft), wherein the printed circuit board includes a plurality of electrical connections at a proximal end of the printed circuit board (wires 30 extend to proximal side; FIGS. 4C, 24B), wherein the printed circuit board includes another plurality of electrical connections at a distal end of the printed circuit board (wires 30 would have connection points at the other end), wherein the printed circuit board includes a plurality of communication conduits connecting electrical connections at the proximal end of the printed circuit board with respective electrical connections at the distal end of the printed circuit board (Each electrical wires in wire 30 include communication conduits; FIG. 4C); and
an end cap (detachable distal tip 300; FIGS. 25A-25B, annotated), wherein the end cap includes one or more cap lumens (matching bores 342, 340, and 344; Para [0083]) and a plurality of end cap electrical connections (internal electrical connector 20; Para [0083]),
wherein, when the end cap is coupled to the shaft, (1) the one or more cap lumens are in communication with the one or more lumens in the shaft (The irrigation channel 42, working channel 40, and two channels for the optical fibers 312 will slide into matching bores 342, 340, and 344 respectively in the distal tip; para [0083]), and (2) the plurality of end cap electrical connections are electrically connected to the electrical connections at the distal end of the printed circuit board (The internal electrical connector 20 of the camera 30 located on the proximal end of the distal tip 300 is forced into electrical contact with the external electrical connection 124, FIG. 26, on the distal end of the insertion tube 302, thereby permitting transfer of electrical power and signals to/from the camera head from/to the peripheral equipment at the proximal end of the endoscope. FIG. 25B; Para [0083]).
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Regarding claim 2, Sonnenschein discloses one or more integrated circuits (internal electrical connector 20; FIG. 25B) coupled to and in electrical communication with the printed circuit board.
Regarding claim 7, Sonnenschein discloses one or more capacitors or resistors (resistor 162 and CCD chips are connected to the connector 20; Para [0059]) coupled to and in electrical communication with the printed circuit board.
Regarding claim 9, Sonnenschein discloses wherein the one or more lumens in the shaft includes a working channel, an irrigation lumen (irrigation channel 42; Also see 112(b) above), a suction lumen, and a plurality of pull wire lumens.
Regarding claim 10, Sonnenschein discloses a handle (proximal most part of the shaft 42. ) coupled to the proximal end of the shaft, wherein the handle includes a port fluidly connected to the working channel of the shaft (irrigation channel 42 would have a fluid port inherently at the proximal side.).
Regarding claim 11, Sonnenschein discloses wherein the end cap includes one or more lighting sources and an imaging device (Resistor 162 and CCD chips are connected to the connector 20, FIG. 20B; Para [0059]), wherein the one or more lighting sources and the imaging device receive power via the plurality of electrical connections at the distal end of the shaft (Signal transmission and electric power supply wires 30 are attached to the back face of external electrical connector 24; para [0053]).
Regarding claim 12, Sonnenschein discloses wherein the end cap includes an end cap printed circuit board that includes the plurality of end cap electrical connections (Resistor 162 and CCD chips are connected to the connector 20; FIG. 25B; Para [0059]).
Regarding claim 13, Sonnenschein discloses wherein the plurality of communication conduits include one or more of: one or more cables, one or more wires (Resistor 162 and CCD chips are connected to the connector 20; FIG. 25B; Para [0059]), one or more optical fibers (two light fibers 44; FIG. 26; Para [0066]), or one or more illumination fibers for transmitting electrical signals.
Regarding claim 14, Sonnenschein discloses wherein the end cap is configured to removably attach to the distal end of the shaft via a snap fit (Clasps 308, on the distal end of the insertion tube 302, fit into grooves 306 on distal tip 300 and snap into slots 304 to hold the distal tip in place. Para [0084]).
Regarding claim 15, Sonnenschein discloses wherein a portion of the printed circuit board is positioned around the outer surface with a larger longitudinal spacing between at least two portions of the printed circuit board (As seen from FIG.4C, the spacing between two portions of the wire 30 can be chosen to have larger space or smaller spaces), and wherein a different section of the printed circuit board is positioned around the outer surface with a smaller longitudinal spacing between at least two other portions of the printed circuit board (As seen from FIG.4C, the spacing between two portions of the wire 30 can be chosen to have larger space or smaller spaces; FIG. 4C, 24B).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 8, is/are rejected under 35 U.S.C. 103 as being unpatentable over Sonnenschein (US 20070182842) in view of Suzuki (US 20170007096).
Regarding claim 8, Sonnenschein does not expressly disclose an anisotropic conductive film, wherein the anisotropic conductive film secures the one or more integrated circuits to the printed circuit board.
Suzuki is directed to an endoscope (abstract) and teaches an anisotropic conductive film, wherein the anisotropic conductive film secures the one or more integrated circuits to the printed circuit board (Connection between the flexible circuit board 25 and the terminals 23 are ACF (Anisotropic conductive film) connection, NCF (non-conductive film) connection, and bump connection. The ends of the individual conductors of the cables 24 may be connected directly to the terminals 23. Para [00689]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sonnenschein to include an anisotropic conductive film with the contacts of the circuit board in accordance with the teaching of Suzuki so that conductivity could be provided in one direction to have more precise conductivity.
Reasons for Allowance
Claim 3
The following is an examiner’s statement of reasons for allowance:
The prior art of record fails to explicitly teach or fairly suggest, alone or in combination, a medical device,
wherein a portion of the shaft includes a groove, and wherein the one or more integrated circuits are positioned within the groove, along with the remaining features of claims 3, 2, and 1.
The closest art Sonnenschein (US 20070182842) provides the channel 42 (FIG. 26, below) as a fluid supply channel.
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Another closest art Houssiere (US 20250000610) teaches a groove in a trocar where a PCB 828 is placed. However, for the size and use of the channel 42, and wires 30 (FIG. 24A, 24B, 26, 4C) in Sonnenschein, the examiner believes that one of ordinary skill in the art would not be motivated to modify channel 42 of Sonnenschein to include a groove in the channel 42 to include a circuit board.
Accordingly, claim 3 is considered to include the allowable subject matter.
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.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO – 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANKAR R GHIMIRE whose telephone number is (571)272-0515. The examiner can normally be reached 8 AM - 5 PM.
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, Anhtuan Nguyen can be reached on 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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/SHANKAR RAJ GHIMIRE/Examiner, Art Unit 3795
/ANHTUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795 09/30/2026
