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 .
Response to Preliminary Amendment
Claims 14 & 18 have an incorrect status identifier (see 37 C.F.R. 1.121(c)(1) and MPEP § 714(II)(C)(A)). Given that Claims 14 & 18 were newly added with the claim set filed December 23, 2024, the status identifier of Claims 14 & 18 should read “New” rather than “Currently Amended”. Further, the struck-through limitations are not considered while the underlined limitations are considered. Appropriate correction is required.
Disposition of Claims
Claims 2-21 are pending.
Claim 1 is canceled.
Claim Rejections - 35 USC § 112(b)
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 2-13 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.
Regarding Claim 2, Claim 2 recites the limitation “cause a light source to emit first support light” on Line 6. It is unclear whether this “light source” is the same “light source” that emits display illumination light as previously recited on Line 4 of Claim 1 or a separate, different light source. For the purpose of examination, “cause a light source to emit first support light” is being interpreted as “cause the light source to emit first support light”
Regarding Claims 3-13, Claims 3-13 are rejected as being dependent upon claims previously rejected under 35 U.S.C. § 112(b).
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding Claim 12, the limitations of Claim 12 are substantially the same as the limitations of Lines 9-10 of Claim 2. As such, Claim 12 fails to further limit the subject matter of Claim 2.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Allowable Subject Matter
Claims 2-11 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) and the double patenting rejections set forth in this Office action.
Claim 12 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b), 112(d) and the double patenting rejections set forth in this Office action.
Claim 13 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action.
Claims 14-21 would be allowable if rewritten or amended to overcome the double patenting rejections set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claims 1, 14 & 21, Ozawa et al. (US 2011/0071352) discloses a control device (Fig. 1, 13; [0030]) for use with an endoscope (Fig. 1, 11; [0030]) and an operating method of the control device ([0086]), comprising:
one or more processors comprising hardware (Fig. 1, 43; [0034]), wherein the one or more processors are configured to:
cause a light source (Fig. 1, 41; [0034]) to emit a display illumination light (Fig. 3, profile B; [0042]);
acquire a display image (Fig. 5, a white light observation image; [0050]) obtained with the display illumination light ([0050]);
cause a light source to emit first support illumination light (Fig. 5, profile A at a first intensity; [0054]);
acquire a first support image (Fig. 8A, G, B; [0062]) obtained with the first support illumination light ([0062]);
acquire first diagnosis support information (Fig. 6, BeS; [0067]) based on the first support image ([0065] - [0067]);
cause the light source to emit second support illumination light (Fig. 5, profile A at a decreased intensity; [0068]), the second support illumination light being determined based on the first diagnosis support information ([0068]); and
acquire a second support image (Fig. 6, Ga, Ba; [0068]) obtained with the second support illumination light ([0068]).
Ozawa et al. fails to explicitly disclose acquiring second diagnosis support information based on the second support image; and executing image processing, based on the second diagnosis support information, on the display image.
Additionally, Ozawa or any other prior art of record fails to disclose, teach or suggest, alone or in combination, an endoscopic illumination control device that a) emits a first illumination light to capture a display image, b) subsequently emits a second illumination light to capture a first support image having first diagnosis information, c) extracts the first diagnosis information, d) uses the first diagnosis information to determine and subsequently emit a third illumination light different from the second illumination light, e) captures a second support image, having second diagnosis information, from the third illumination light, f) extracts the second diagnosis information, and g) subsequently performs image processing on the display image using the second diagnosis information, which was based on the first diagnosis information.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-12 & 14-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-15 & 17 of U.S. Patent No. 12,171,396.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current application limit a broader version of '396 and are thus anticipated by '396.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Yamazaki (US 2021/0113058) teaches an endoscope system with an illumination-light setting section.1-
Oosake (US 2020/0069160) teaches a medical imaging processing system that brings attention to a region of interest to a user.
Endo (US 2019/0087970) teaches an endoscopic system that adjusts brightness of illumination light to better view deep blood vessels.
Imai (US 2018/0249889) teaches an endoscopic system that adjusts brightness based on two separate images.
Kuramoto (US 2017/0014021) teaches an endoscope system capable of emphasizing a slight difference in color tone.
Fujimoto et al. (US 2016/0198076) teaches an endoscope system with a brightness adjusting unit.
On (US 2013/0184530) teaches an endoscope apparatus and brightness control method.
Yoshino et al. (US 2012/0218394) teaches an image processing device that includes a candidate attention area detection section.
Saito (US 2011/0237884) teaches an endoscope emitting a plurality of illumination light in various wavelengths.
Suda (US 2008/0232131) teaches a light source device of an endoscope with two processing units and configured to adjust the light intensity.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN FLOYD LONDON whose telephone number is (571)272-4478. The examiner can normally be reached Monday - Friday: 10:00 am ET - 6:00pm ET.
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/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795
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