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 Objections
Claims 1-20 are objected to because of the following informalities: independent claims 1, 20 recites “an bending portion” should be changed to – a bending portion. 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)(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 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stone et al. (US 6491626).
It is noted that although “first bending element” and “second bending element” recited in claim 1 could be interpreted as a segment corresponding to each consecutive groove 22a, 22b, to also reject limitation of claim 8 using the same reference, “first bending element” is read on segment with two consecutive grooves 23b and “second bending element” is read on two grooves 22b as discussed below.
Regarding claim 1, Stone discloses a bending portion (articulator 20 - see figures 1-2b, 17) comprising:
a first bending element (read on segment with two consecutive grooves 22a – see include, but are not limited to, figures 1-3, 17, col. 3, lines 16-26, col. 5, line 65-col. 6, line 2 and also annotated figure 1 below) comprising:
a first outer circumferential surface (see annotated figure 1 below) ;
a first groove extending from a first opening on the first outer circumferential surface (first groove 22a extending from a first opening on the first outer circumference surface – see annotated figure 1 below and see also figures 2a-3, 17, col. 3, lines 14-33);
a second bending element (read on segment with two consecutive grooves 22b) connected to the first bending element in a longitudinal direction (see annotated figure 1 below and see also figures 2a-3, 17, col. 3, lines 15-33), comprising:
a second outer circumferential surface (see annotated figure 1 below and see also figures 2a-3, 17);
a second groove (one of groove 22b) extending from a second opening on the second outer circumferential surface (see annotated figure 1 below and see also figures 2a-3, 17, col. 3, lines 23-33);
wherein the first bending element and the second bending element are disposed adjacent to each other in the longitudinal axis direction (longitudinal axis direction of articulator 20 - see annotated figure 1 and also figures 2a-3, 17, col. 4, lines 8-17),
a bottom of the first groove and a bottom of the second groove are aligned along the longitudinal axis direction (end of first groove 22a and end of second groove 22b are aligned along the longitudinal axis direction of the articulator 20 or longitudinal axis of tool control wire 32– see figures 1-3, 17, col. 6, lines 13-30, col. 3, lines 15-40);
the first opening of the first groove opens in a different direction from the second opening of the second groove (first opening of the groove 22a and second grooves 22b open in opposite lateral sides of the articulator 20– see figures 1-3, 17, col. 3, lines 14-33).
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Regarding claim 2, Stone bending portion according to claim 1, wherein the first groove (22a) extending from the first opening on the first outer circumferential surface in a first direction on a first side (transverse groove 22a extending inwardly from lateral side of the longitudinally extending body) relative to a first bending plane having a first bending direction (bending direction of longitudinal extending body– see include, but are not limited to, figures 1-3, 17, col. 3, lines 14-33, col. 4, lines 1-4, col. 5, line 1-col. 6, line 2, col. 6, lines 35-55); and
the second groove (22b) extending from the second opening on the second outer circumferential surface in a second direction on a second side (transverse groove 22b extending inwardly from the second opening on the second surface of opposite side – see include, but are not limited to, figures 1-3, col. 6, lines 1-8) relative to the first bending plane (bending plane in direction R), the second side being opposite to the first side (opposite lateral sides of the devices – see include, but are not limited to, figures 1-4, 17, col. 3, lines 15-26, col. 4, lines 1-4, col. 6, lines 1- 12, 35-55).
Regarding claim 3, Stones discloses the bending portion according to claim 2, wherein the first direction is orthogonal (perpendicular, transverse or right angle) relative to the first bending plane, and the second direction is orthogonal (perpendicular, transverse or right angle) relative to the first bending plane (see include, but are not limited to, figures 1, 4, 17, col. 2, lines 50-59, col. 3, lines 15-23, col. 6, lines 1-12).
Regarding claim 4, Stones discloses the bending portion according to claim 1, wherein the first bending element and the second bending element are integrally formed as a single unitary member (single unitary member of articulator 22 – see annotated figure 1 above).
Regarding claim 5, Stones discloses the bending portion according to claim 1, wherein the first bending element comprising a first inner circumferential surface (innermost 27 – see figure 2A, col. 6, lines 16-23);
the second bending element comprising a second inner circumferential surface (innermost end 29 – see figure 2A, col. 6, lines 16-23);
the first groove (22a) is entirely disposed between the first outer circumferential surface and the first inner circumferential surface (innermost end 27) – see annotated figure 1 above, and figure 2A, col. 6, lines 16-23); and
the second groove (22b) is entirely disposed between the second outer circumferential surface and the second inner circumferential surface (innermost end 29) - see include, but are not limited to, annotated figure 1 above, figure 2A, col. 6, lines 16-23).
Regarding claim 6, Stones discloses the bending portion according to claim 1, wherein the first groove having a first side surface and a second side surface opposing the first side surface (opposite side surfaces on left and right of groove 22a – see figures 1-2B); and
the second groove having a third side surface and a fourth side surface opposing the third side surface (opposite side surfaces of groove 22b – see figures 1-2B).
Regarding claim 7, Stones discloses the bending portion according to claim 6, wherein the first side surface and the second side surface are parallel to each other (side surfaces on left side and right site of groove 22a are parallel - see figures 1-2B); and the third side surface and the fourth side surface are parallel to each other (side surfaces on left side and right side of groove 22b are parallel – see figure 1-2A).
Regarding claim 8, Stones discloses the bending portion according to claim 1, wherein the first element comprising a third groove (another groove 22a) extending from a third opening on the first outer circumferential surface (see annotated figure 1 above); and the second element comprising a fourth groove (another groove 22b) extending from a fourth opening on the second outer circumferential surface (see annotated figure 1 above).
Regarding claim 9, Stones discloses the bending portion according to claim 8, wherein the third groove (another groove 22a) is entirely disposed between the first outer circumferential surface and the first inner circumferential surface (innermost end 27) – see annotated figure 1 above and figure 2A, col. 6, lines 15-25); and
the fourth groove (another groove 22b) is entirely disposed between the second outer circumferential surface and the second inner circumferential surface (innermost end 29) - see annotated figure 1 above and figure 2A, col. 6, lines 15-25).
Regarding claim 10, Stones discloses the bending portion according to claim 8, wherein the third groove (another groove 22a) extending from the third opening on the first outer circumferential surface in the second direction on the second side relative to a first bending plane having a first bending direction and a second bending direction; and
the fourth groove (another groove 22b) extending from the fourth opening on the second outer circumferential surface in the first direction on the first side relative to the first bending plane (see discussion corresponding first groove (22a) and second groove (22b) in the rejection of claim 2 and see include, but are not limited to, figures 1-4, 17, col. 3, lines 15-26, col. 4, lines 1-4, col. 6, lines 1- 12, 35-55).
Regarding claim 11, Stones discloses the bending portion according to claim 8, wherein the third groove having a first side surface and a second side surface opposing the first side surface (opposite side surfaces on left and right of another groove 22a – see figures 1-2B); and the fourth groove having a third side surface and a fourth side surface opposing the third side surface (opposite side surfaces on left and right of the another groove 22b – see figures 1-2B).
Regarding claim 12, Stones discloses the bending portion according to claim 11, wherein the first side surface and the second side surface are parallel to each other (first surface on the left and side surface on the right of the another groove 22a are parallel – see figures 2a-2b); and the third side surface and the fourth side surface are parallel to each other (side surface on the left and side surface on the right of another groove 22b are parallel – see figures 2A-2B).
Regarding claim 13, Stones discloses the bending portion according to claim 2, wherein the first bending element includes a first hole and a second hole (holes for wires 30, 32 – see annotated figure 1 above, figures 2A-2B, 17, col. 6, lines 15-25), at least one of which defining the first inner circumferential surface (innermost surface 27 – see figures 2A-2B, col. 6, lines 15-25); and the first hole and the second hole have a center aligned with the first bending plane (see include, but are not limited to, figures 2A-2B, 4, 17, col. 6, lines 35-60).
Regarding claim 14, Stones discloses the bending portion according to claim 2, wherein the second bending element includes a first hole and a second hole (holes for wires 30, 30 – see annotated figure 1 above, and figures 2B, 17), at least one of which defining the second inner circumferential surface (innermost end surface 29 – see figures 2A-2B); and the first hole and the second hole have a center aligned with the first bending plane (see include, but are not limited to, figures 2A-2B, 4, 17, col. 6, lines 35-60).
Regarding claim 15, Stones discloses the bending portion according to claim 1, wherein the bottom of the first groove (bottom of groove 22a) and the bottom of the second groove (bottom of groove 22b) are aligned along a first axis on the longitudinal axis direction (longitudinal axis direction of extending body- see include, but are not limited to, figures 1-3, 17, col. 3, lines 15-34, col. 4, lines 1-4, col. 6, lines 1-12).
Regarding claim 16, Stones discloses the bending portion according to claim 15, wherein the first axis is parallel to the longitudinal axis direction (see include, but are not limited to, figures 2B-3, 17, col. 3, lines 15-34, col. 4, lines 1-4, col. 6, lines 1-12).
Regarding claim 17, Stones discloses an endoscope (surgical tool, arthroscopy – col. 2, lines 36) comprising:
an insertion portion comprising the bending portion according to claim 1 (see discussion in the rejection of claim 1); and
a first pulling wire (32) configured to bend the first bending element and the second bending element (see include, but are not limited to, figures 2B, 17, col. 6, lines 19-21).
Regarding claim 18, Stones discloses the endoscope according to claim 17, wherein the first pulling wire is disposed in both of the first and second grooves (control wire 32 is disposed in both of first groove 22a and second groove 22b – see include, but are not limited to, figures 2a-2b, 17).
Regarding claim 19, Stones discloses the bending portion according to claim 1, further comprising:
a third bending element (another bending segment of articulator 20 – see figure 1-3, 17) connected to the second bending element in the longitudinal direction ( see annotated figure 1 above and figures 2A-3, 17) comprising:
a third outer circumferential surface (outer circumference surface of third element of articulator 20 – see include, but are not limited to, figures 1, 17);
a third groove (e.g., groove 22a on bending element connected to second bending element – see annotated figure 1, figures 2A-3, 17) extending from a third opening on the third outer circumferential surface;
wherein the third bending element and the second bending element are disposed adjacent to each other in the longitudinal axis direction (see annotated figure 1 above and figures 2a-3, 17),
a bottom of the third groove (bottom of groove 22a on the third bending element) and a bottom of the second groove (bottom of second groove 22b) are aligned along the longitudinal axis direction; the first opening of the first groove opens in a same direction as the third opening of the third groove (first opening of first groove 22a on first bending element opens in the same direction of the opening of third groove 22a on the third element – see for example, annotated figure 1 above and figures 2A-3, 17, col. 5, line 1, col. 6, line 8).
Regarding claim 20, Stones discloses a bending portion (articulator 20) comprising:
a first bending element (see discussion in the rejection of claim 1 above) comprising:
a first outer circumferential surface (see discussion in the rejection of claim 1 and annotated figure 1 above);
a first groove extending from a first opening on the first outer circumferential surface (see discussion in the rejection of claim 1 above);
a second bending element connected to the first bending element in a longitudinal direction (see discussion in the rejection of claim 1 above), comprising:
a second outer circumferential surface (see discussion in the rejection of claim 1 above);
a second groove extending from a second opening on the second outer circumferential surface (see discussion in the rejection of claim 1 above);
wherein the first bending element and the second bending element are disposed adjacent to each other in the longitudinal axis direction (see discussion in the rejection of claim 1 above),
a bottom of the first groove and a bottom of the second groove are aligned along the longitudinal axis direction (see discussion in the rejection of claim 1 above);
the first groove (22a) extends from a bottom of the first groove in a first direction intersecting a radial direction (transverse, perpendicular, radial direction) of the first bending element (see include, but are not limited to, figures 1-4, 17, col. 3, lines 15-26, col. 4, lines 1-4, col. 6, lines 1- 12, 35-55 and corresponding discussion in the rejection of claims 2-3); and
the second groove (22b) extends from a bottom of the second groove in a second direction intersecting a radial direction (transverse, perpendicular, radial direction) of the second bending element (see include, but are not limited to, figures 1-4, 17, col. 3, lines 15-26, col. 4, lines 1-4, col. 6, lines 1- 12, 35-55 and corresponding discussion in the rejection of claims 2-3).
Claims 1-7, 13-18 and 20 are alternatively rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin (US 20130158355).
It is noted that components of steering portion in figure 6 of Lin are similar to components of bending portion figures 3-5 in the instant application.
Regarding claim 1, Lin discloses a bending portion (steering portion of steering module 5 – see figure 6) comprising:
a first bending element (1st member 1 – see annotated figure 6 below) comprising:
a first outer circumferential surface (see annotated figure 6 below);
a first groove (open slot 111) extending from a first opening on the first outer circumferential surface (see annotated figure 6 below and paragraphs 0035-0036);
a second bending element (2rd member 1) connected to the first bending element in a longitudinal direction (see annotated figure 6 below), comprising:
a second outer circumferential surface (see annotated figure 6 below);
a second groove extending from a second opening on the second outer circumferential surface (see annotated figure 6 below);
wherein the first bending element and the second bending element are disposed adjacent to each other in the longitudinal axis direction (see annotated figure 6 below),
a bottom of the first groove (open slot 111) and a bottom of the second groove (second open slot 111) are aligned along the longitudinal axis direction (see annotated figure 6 below and paragraphs 0035-0036);
the first opening of the first groove (first open slot 111) opens (e.g., to the right direction – based in figure 6) in a different direction from the second opening of the second groove (second opening of second open slot 111 opens to the left direction – see annotated figure 6 below).
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Regarding claim 2, Lin discloses the bending portion according to claim 1, wherein the first groove (first open slot 111) extending from the first opening on the first outer circumferential surface in a first direction on a first side (direction to the right side) relative to a first bending plane having a first bending direction (bending direction up/down - see annotated figure 6 above); and
the second groove (second open slot 111) extending from the second opening on the second outer circumferential surface in a second direction on a second side (left side) relative to the first bending plane, the second side being opposite to the first side (see annotated figure 6 above and paragraphs 0035-0036).
Regarding claim 3, Lin discloses the bending portion according to claim 2, wherein the first direction is orthogonal relative to the first bending plane, and the second direction is orthogonal relative to the first bending plane (see annotated figure 6 above).
Regarding claim 4, Lin discloses the bending portion according to claim 1, wherein the first bending element (1st member 1) and the second bending element (2rd member 1) are integrally formed as a single unitary member (single unitary member of steering module – see annotated figure 6).
Regarding claim 5, Lin discloses the bending portion according to claim 1, wherein the first bending element (1st member 1) comprising a first inner circumferential surface (see annotated figure 6 above);
the second bending element (2rd member 1) comprising a second inner circumferential surface (see annotated figure 6 above);
the first groove (1st open slot 111) is entirely disposed between the first outer circumferential surface and the first inner circumferential surface (see annotated figure 6 above); and
the second groove (2rd open slot 111) is entirely disposed between the second outer circumferential surface and the second inner circumferential surface (see annotated figure 6 above).
Regarding claim 6, Lin discloses the bending portion according to claim 1, wherein the first groove (1st open slot 111) having a first side surface and a second side surface opposing the first side surface (1st open slot 111 has surfaces/walls on opposite sites -see annotated figure 6 above); and
the second groove (2rd open slot 111) having a third side surface and a fourth side surface opposing the third side surface (2rd open slot 111 has opposite surfaces on opposite sides) see annotated figure 6 above and paragraphs 0035-0036).
Regarding claim 7, Lin discloses the bending portion according to claim 6, wherein the first side surface and the second side surface are parallel to each other (surfaces on opposite sides of 1st open slot 111 are parallel to each other – see annotated figure 6 above); and the third side surface and the fourth side surface are parallel to each other (surfaces on opposite sides of 2rd open slot are parallel - see annotated figure 6 above).
Regarding claim 13, Lin discloses the bending portion according to claim 2, wherein the first bending element (1st member 1) includes a first hole and a second hole (holes for guiding wire members 3 – see figures 1, 6, paragraphs 0020-0021, 0023, 0035-0037), at least one of which defining the first inner circumferential surface (see also annotated figure 6 above); and the first hole and the second hole have a center aligned with the first bending plane (see annotated figure 6 above and paragraphs 0035-0037).
Regarding claim 14, Lin discloses the bending portion according to claim 2, wherein the second bending element includes a first hole and a second hole (holes for guiding wire members 3), at least one of which defining the second inner circumferential surface (see also annotated figure 6 above); and the first hole and the second hole have a center aligned with the first bending plane (see annotated figure 6 above and paragraphs 0035-0037).
Regarding claim 15, Lin discloses the bending portion according to claim 1, wherein the bottom of the first groove (bottom of 1st open slot 111) and the bottom of the second groove (bottom of 2rd open slot 111) are aligned along a first axis on the longitudinal axis direction (see annotated figure 6 above and paragraphs 0035-0037).
Regarding claim 16, Lin discloses the bending portion according to claim 15, wherein the first axis is parallel to the longitudinal axis direction (see annotated figure 6 above and paragraphs 0035-0037).
Regarding claim 17, Lin discloses an endoscope (see figure 6, paragraphs 0020, 0035-0037) comprising:
an insertion portion comprising the bending portion according to claim 1 (see discussion in the rejection of claim 1 above and annotated figure 6); and
a first pulling wire (guiding wire member 3) configured to bend the first bending element and the second bending element (see include, but are not limited to, annotated figure 6, paragraphs 0020, 0035-0037).
Regarding claim 18, Lin discloses the endoscope according to claim 17, wherein the first pulling wire is disposed in both of the first and second grooves (guiding wire member 13 is disposed in both the first open slot 111 and second open slot 111 – see annotated figure 6 and paragraphs 0035-0036).
Regarding claim 20, Lin discloses a bending portion comprising:
a first bending element (see similar discussion in the rejection of claim 1 and annotated figure 6) comprising:
a first outer circumferential surface (see similar discussion in the rejection of claim 1 and annotated figure 6);
a first groove extending from a first opening on the first outer circumferential surface (see similar discussion in the rejection of claim 1 and annotated figure 6);
a second bending element connected to the first bending element in a longitudinal direction (see similar discussion in the rejection of claim 1 and annotated figure 6), comprising:
a second outer circumferential surface (see similar discussion in the rejection of claim 1 and annotated figure 6);
a second groove extending from a second opening on the second outer circumferential surface (see similar discussion in the rejection of claim 1 and annotated figure 6);
wherein the first bending element and the second bending element are disposed adjacent to each other in the longitudinal axis direction, a bottom of the first groove and a bottom of the second groove are aligned along the longitudinal axis direction (see similar discussion in the rejection of claim 1 and annotated figure 6);
the first groove extends from a bottom of the first groove in a first direction intersecting a radial direction of the first bending element (see similar discussion in the rejection of claim 2-3 and annotated figure 6, paragraphs 0035-0037); and the second groove (2rd open slot 111) extends from a bottom of the second groove in a second direction intersecting a radial direction of the second bending element (see similar discussion in the rejection of claim 2-3 and annotated figure 6, paragraphs 0035-0037).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12178406. Although the conflicting claims are not identical, they are not patentably distinct from each other because the instant claims 1-20 and Patent claims 1-19 are directed to the same invention with a different in scope and are therefore an obvious variant thereof or the invention defined in instant claims 1-20 is an obvious variation of the invention defined in the patent claims 1-19 because for limitations in the instant claims that are not recited in patent claims (e.g., bottom of the first groove and a bottom of the second groove are aligned along the longitudinal axis direction….) are known by prior art (see for example, Stone reference as discussed in the rejection above). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent claims with the well-known teachings as taught in the prior art (e.g., Stone reference cited above) in order to yield predictable result of allowing excellent bending flexibility in a preferred bending plane (see for example, Stone (col. 2, lines 50-59).
Allowance of claims 1-20 would result in an un-warranted timewise extension of the monopoly granted for the invention as defined in claims 1-19 of Patent No. 12178406.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yan et al. (US 20200237188) discloses endoscope with bending portions comprises plurality of bending elements with grooves (see figures 2-4, 7).
Siegel et al. (US 11382744) discloses steerable delivery catheter comprising bending portion with plurality of bending elements and grooves 34, 35 (see figures 3a, 5, 6).
Seto et al. (US 9820635) discloses bending tube for endoscope comprising plurality of grooves (see also figures 6, 13-15).
Seto et al. (US 20170224192) discloses endoscope bending portion comprising plurality grooves (see for example, figure 2).
Ito (US20120016191) discloses bending portion comprising grooves 52 (see for example, figures 6a-6b).
Kitagawa discloses endoscope with insertion portion comprises grooves on each bending elements with openings open to outer circumference surfaces of the bending element (see figures 2, 10-11).
Boulais et al. (US 20050131279) discloses articulation joint for video endoscope comprising grooves/slots (see figures 23a, 23c,
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AN SON P HUYNH whose telephone number is (571)272-7295. The examiner can normally be reached 9:00 am-6:00 pm.
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/AN SON P HUYNH/Primary Examiner, Art Unit 3795
August 7, 2026
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