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’s election without traverse of species b) in the reply filed on 8/18/2026 is acknowledged.
Claim 7 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/18/2026. Claims 1-6, 8-20 remain.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the:
first and second image sensors arranged parallel to the optical axis of the imaging device (claim 8)
light sources of claim 9
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112a
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 and dependent claims are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “separate optical element”. 0050 describes in general what kind of element this is but the specification does not specifically describe which element this is in the actual device and no reference number is provided. If a detailed element with a reference number described in the specification is to be interpreted as the claimed “separate optical element”, the specification must explicitly state the relationship.
Claim Rejections - 35 USC § 112b
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.
Claim 2, 8, and any dependent claims 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 2 recites “at least one separate optical element” and “a further separate optical element”. The scope of these elements is unclear. If there is an additional optical element, it is unclear if it is part of the “at least one separate optical element” or if it is part of the “a further separate optical element” since one element (the at least one separate optical element) has no upper bound as to the number of elements.
Claim 8 requires that the image sensors are parallel to the optical axis. There is no drawing showing this configuration and it is unclear how the image sensors would therefore be configured to meet this requirement. Prior art You will be considered to read on this claim as provided in the rejection until further clarification is given.
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, 4, 6, 8, 9, 14, 15, 18 is/are rejected under 35 U.S.C. 102a1 as being anticipated by You US 20120105594 A1.
You discloses for claim 1, “An imaging device for an endoscope, comprising
a pentaprism (beam splitter 300; fig 10; 0077), the pentaprism comprising a main body (first part prism 301), a prism wedge (second part prism 302), and an optical axis, wherein an entrance surface (light incident surface 310), a second internal reflective surface (reflective member 320), and
a first exit surface (second light exit surface 303) are arranged on the main body, and
a second exit surface (first light exit surface 311) is arranged on the prism wedge;
the pentaprism further comprising a dichroic beam splitting layer (beam splitting surface 303) as a first internal reflective and transmissive splitting layer; and
at least a first image sensor for capturing light of a first spectral region and a second image sensor for capturing light of a second spectral region (0035, 0055, 0058 describes visible light image sensor and a IR light image sensor),
wherein the first spectral region and the second spectral region differ at least partially from each other (0035, 0055, 0058 describes visible light image sensor and a IR light image sensor), and the dichroic beam splitting layer is arranged between the main body and the prism wedge of the pentaprism (fig 10), such that incident beams comprising the first and second spectral regions are split by the dichroic beam splitting layer into first beams of the first spectral region and second beams of the second spectral region (fig 10), and
wherein at least one separate optical element (relay lens 150 is described as an optional additional optical element to the various embodiments 0066-0068; fig 7) is arranged between the pentaprism and the first image sensor or the second image sensor, the at least one separate optical element configured to change a property of the light of the first spectral region and/or the second spectral region, so that two separate images are capturable by the first image sensor and the second image sensor (0066-0068)”.
You discloses for claim 4, “The imaging device of claim 1, wherein the at least one separate optical element or a further separate optical element comprises a mirror element (reflective member 320; fig 10; 0079) configured to redirect the first beams of the first spectral region or the second beams of the second spectral region”.
You discloses for claim 6, “The imaging device of claim 1, wherein the dichroic beam splitting layer is arranged on a surface of the main body adjacent to a surface of the prism wedge or on a surface of the prism wedge adjacent to a surface of the main body (fig 10)”.
Per the interpretation provided, You discloses for claim 8, “The imaging device of claim 1, wherein the first image sensor and the second image sensor are arranged parallel to the optical axis of the imaging device (fig 10).
You discloses for claim 9, “The imaging device of claim 1, further comprising a light source comprising a first illumination spectral region comprising white light and a second excitation spectral region comprising excitation light, configured such that that a fluorophore within an illuminated scene is caused to emit fluorescent light (0036)”.
You discloses for claim 14, “The imaging device of claim 1, further comprising an objective system configured to be positioned in a distal end section of an elongate shaft of the endoscope, wherein the objective system comprises an objective lens system with at least a first lens, at least a second lens, and optional further lenses in order from an objective side to receive image light and to pass the image light towards the first image sensor and the second image sensor, and wherein the pentaprism is optically arranged between a most proximal lens of the objective lens system and the first image sensor and the second image sensor (fig 9 shows an optional objective optical lens system applicable to the embodiments)”.
You discloses for claim 15, “The imaging device of claim 1, wherein beams entering in or exiting from the pentaprism are focal and/or converging (fig 7 explicitly shows the beams considered to represent the embodiments described)”.
You discloses for claim 18, “The imaging device of claim 14, wherein beams entering in or exiting from the pentaprism are focal and/or converging (fig 7 explicitly shows the beams considered to represent the embodiments described)”.
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, 3, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over You as applied to claim 1 above, and further in view of Modell US 20040186382 A1.
You does not disclose for claim 2, “The imaging device of claim 1, wherein the at least one separate optical element or a further separate optical element is or are a lens for demagnification of the light of the first spectral region or the second spectral region”. Modell teaches in the same field of endeavor, a moveable relay lens for magnification and demagnification (0104). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the modification of Modell into the invention of You in order to configure the imaging device e.g. as claimed because provides the added advantage of adjustable imaging zoom via magnification and demagnification.
Modified You discloses for claim 3, “The imaging device of claim 2, wherein the at least one of the at least one separate optical element or a further separate optical element is or are movable (Modell”: 0104)”.
You discloses for claim 16, “The imaging device of claim 2, wherein beams entering in or exiting from the pentaprism are focal and/or converging (fig 7 explicitly shows the beams considered to represent the embodiments described)”.
Claim(s) 5, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over You as applied to claim 1 above, and further in view of Yoshida US 20130060087 A1.
You does not disclose for claim 5, “The imaging device of claim 1, wherein the at least one separate optical element or a further separate optical element is or are a filter configured to block an excitation wavelength or for discriminating further the first spectral region or second spectral region”. Yoshida teaches in the same field of endeavor, providing a filter 22 after a dichroic prism and in front of a camera sensor (fig 6; 0073, 0112). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the modification of Yoshida into the invention of You in order to configure the imaging device e.g. as claimed because it helps to block excitation light from the image signal which improves image quality.
You discloses for claim 17, “The imaging device of claim 5, wherein beams entering in or exiting from the pentaprism are focal and/or converging (fig 7 explicitly shows the beams considered to represent the embodiments described)”.
Claim(s) 10, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over You as applied to claim 1 above, and further in view of Themelis US 20190274518 A1.
You does not disclose for claim 10, “The imaging device of claim 1, wherein the second image sensor for capturing the second spectral region comprising fluorescent light has a smaller image area than the first image sensor for capturing the first spectral region comprising white light”, i.e. merely does not specify/provide details as to the sizes of the image sensor regions. Themelis teaches in the same field of endeavor, a fluorescence imager smaller than the visible light imager (0096). Since You fails to disclose the nature of the image sensors, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used any suitable configuration known in the art, including the one taught by Themelis to achieve the predictable result of providing two different image sensors for white light and narrowband light imaging.
You does not disclose for claim 12, “The imaging device of claim 9, wherein the second image sensor for capturing the second spectral region comprising fluorescent light has a smaller image area than the first image sensor for capturing the first spectral region comprising white light”. Themelis teaches in the same field of endeavor, a fluorescence imager smaller than the visible light imager (0096). Since You fails to disclose the nature of the image sensors, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used any suitable configuration known in the art, including the one taught by Themelis to achieve the predictable result of providing two different image sensors for white light and narrowband light imaging.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over You and Modell as applied to claim 2 above, and further in view of Themelis US 20190274518 A1.
You does not disclose for claim 11, “The imaging device of claim 2, wherein the second image sensor for capturing the second spectral region comprising fluorescent light has a smaller image area than the first image sensor for capturing the first spectral region comprising white light”. Themelis teaches in the same field of endeavor, a fluorescence imager smaller than the visible light imager (0096). Since You fails to disclose the nature of the image sensors, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used any suitable configuration known in the art, including the one taught by Themelis to achieve the predictable result of providing two different image sensors for white light and narrowband light imaging.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over You as applied to claim 1 above, and further in view of Banik US 20190274518 A1.
You does not disclose for claim 13, “The imaging device of claim 1, wherein the imaging device is a component of a chip-on-the-tip endoscope”, simply not detailing the particulars of the imaging sensor. Banik teaches in the same field of endeavor, imaging sensors as camera on a chip (0002). Since You fails to disclose the nature of the image sensors, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used any suitable configuration known in the art, including the one taught by Banik to achieve the predictable result of providing an imaging sensor.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over You and further in view of Duckett US 20190265490 A1.
You discloses for claim 19,
“an imaging device disposed within a distal portion of the shaft, the imaging device comprising
a pentaprism (beam splitter 300; fig 10; 0077), the pentaprism comprising a main body (first part prism 301), a prism wedge (second part prism 302), and an optical axis, wherein an entrance surface (light incident surface 310), a second internal reflective surface (reflective member 320), and
a first exit surface (second light exit surface 303) are arranged on the main body, and
a second exit surface (first light exit surface 311) is arranged on the prism wedge;
the pentaprism further comprising a dichroic beam splitting layer (beam splitting surface 303) as a first internal reflective and transmissive splitting layer; and
at least a first image sensor for capturing light of a first spectral region and a second image sensor for capturing light of a second spectral region (0035, 0055, 0058 describes visible light image sensor and a IR light image sensor),
wherein the first spectral region and the second spectral region differ at least partially from each other (0035, 0055, 0058 describes visible light image sensor and a IR light image sensor), and the dichroic beam splitting layer is arranged between the main body and the prism wedge of the pentaprism (fig 10), such that incident beams comprising the first and second spectral regions are split by the dichroic beam splitting layer into first beams of the first spectral region and second beams of the second spectral region (fig 10), and
wherein at least one separate optical element (relay lens 150 is described as an optional additional optical element to the various embodiments 0066-0068; fig 7) is arranged between the pentaprism and the first image sensor or the second image sensor, the at least one separate optical element configured to change a property of the light of the first spectral region and/or the second spectral region, so that two separate images are capturable by the first image sensor and the second image sensor (0066-0068)”,
but does not describe the imaging device in the context of an endoscopic system, i.e.:
“An endoscopic system comprising, a handle; an elongate shaft; a light source”, simply lacking the detail of the specific type of camera device. Duckett teaches in the same field of endeavor, a pentaprism beam splitting element configured with an endoscope (e.g. figs 1-3, 8). Since You fails to disclose the nature of the camera device, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used any suitable configuration known in the art, including the one taught by Duckett to achieve the predictable result of configuring a specific camera imaging device containing a pentaprism beam splitter.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over You and Duckett as applied to claim 19 above, and further in view of Kobayashi US 20020026098 A1.
You does not disclose for claim 20, “The endoscopic system of claim 19, further comprising an image processing unit configured such that images of the first spectral region captured by the first image sensor and of the second spectral region are captured by the second image sensor are captured separately, in parallel, and are displayable as superimposed images by a display system”, simply lacking the specific manner in which the images are displayed. Kobayashi teaches in the same field of endeavor, superimposing an excitation light image/fluorescence image with a normal image (0013). Since You fails to disclose the nature of the image display, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used any suitable configuration known in the art, including the one taught by Kobayashi to achieve the predictable result of displaying multiple images.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAE K WOO whose telephone number is (571)272-0837. The examiner can normally be reached M-F 8:30-2:30p, 6p-9p.
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 at (571) 272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Jae Woo/Examiner, Art Unit 3795
/ANHTUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
10/13/2026
