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 .
Election/Restrictions
Applicant’s election of Invention I, Species A, readable on claims 1-5, 8-12 in the reply filed on 7/13/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 1-5 and 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gerrans et al. (US Patent Application Publication No. 2012/0259217, hereinafter Gerrans).
In regard to claim 1, Gerrans discloses a control device (40) for use with an endoscope comprising:
at least one processor (via electronics controlling the pump in the control device (40), Fig. 2, Pars. 34,70) configured to:
control a pump to feed a fluid through a flow passage of an endoscope (Pars. 34,70);
while the fluid is retained in a space, perform drive control of the pump to switch between applying pressurization and depressurization to the flow passage a plurality of times to repeatedly change a flow direction of the fluid retained in the space (Par. 34, via a pulsed mode), wherein the fluid is suctioned and supplied through the flow passage repeatedly without the fluid draining out from both of the flow passage and the space (the controller is capable of the claimed function using the pulsed mode, Par. 34); and
after performing the drive control, control the pump to discharge the fluid out of the space through the flow passage (via evacuating fluid from the balloon, Par. 34).
In regard to claim 2, Gerrans teaches wherein the at least one processor is configured to perform the drive control of the pump by adjusting a number of times that the pressurization and the depressurization is performed (Par. 34).
In regard to claim 3, Gerrans teaches wherein the at least one processor is configured to perform the drive control of the pump by adjusting a speed of the pressurization and the depressurization (via pulsing the fluid, thereby adjusting the speed of the fluid, Par. 34).
In regard to claim 4, Gerrans teaches wherein the at least one processor is configured to perform the drive control of the pump by adjusting a time period during which the pressurization and the depressurization are performed (the pulsed mode would have preset timings between the pulses to repeatedly inflate/deflate the balloon, Par. 23,34).
In regard to claim 5, Gerrans teaches wherein the at least one processor is configured to perform the drive control of the pump by adjusting a strength of a pressure applied during the pressurization or the depressurization (Par. 70, via bodily lumen measurements).
In regard to claim 8, Gerrans teaches wherein the space is formed in part by an outer surface of the endoscope (the space is formed by the balloon (24)).
In regard to claim 9, Gerrans teaches wherein the space is formed in part by a first balloon provided on the endoscope (the space is formed by the balloon (24)).
In regard to claim 10, Gerrans teaches wherein the endoscope is configured to be inserted into a tubular organ, and the space is formed in part by a wall of the tubular organ (the space is formed, in part, by the diameter of the tubular organ which limits expansion of the space within the balloon).
In regard to claim 11, Gerrans teaches wherein a cycle of the pressurization and the depressurization per is performed per predetermined period (Par. 34,70).
In regard to claim 12, Gerrans discloses an endoscope apparatus comprising: the control device according to claim 1 (see rejection of Claim 1); and a pump configured to feed the fluid through the flow passage of the endoscope (via pump within the control device (40)).
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 1-5 and 8-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,185,919 (hereinafter ‘919). Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the claim mapping below.
In regard to claim 1, ‘919 discloses a control device for use with an endoscope comprising:
at least one processor (see Claim 1) configured to:
control a pump to feed a fluid through a flow passage of an endoscope (see Claim 1);
while the fluid is retained in a space, perform drive control of the pump to switch between applying pressurization and depressurization to the flow passage a plurality of times to repeatedly change a flow direction of the fluid retained in the space, wherein the fluid is suctioned and supplied through the flow passage repeatedly without the fluid draining out from both of the flow passage and the space (see Claim 1); and
after performing the drive control, control the pump to discharge the fluid out of the space through the flow passage (see Claim 1).
In regard to claim 2, ‘919 teaches wherein the at least one processor is configured to perform the drive control of the pump by adjusting a number of times that the pressurization and the depressurization is performed (see Claim 9).
In regard to claim 3, ‘919 teaches wherein the at least one processor is configured to perform the drive control of the pump by adjusting a speed of the pressurization and the depressurization (see Claim 9).
In regard to claim 4, ‘919 teaches wherein the at least one processor is configured to perform the drive control of the pump by adjusting a time period during which the pressurization and the depressurization are performed (see Claim 9).
In regard to claim 5, ‘919 teaches wherein the at least one processor is configured to perform the drive control of the pump by adjusting a strength of a pressure applied during the pressurization or the depressurization (see Claim 9).
In regard to claim 8, ‘919 teaches wherein the space is formed in part by an outer surface of the endoscope (see Claim 16).
In regard to claim 9, ‘919 teaches wherein the space is formed in part by a first balloon provided on the endoscope (see Claim 16).
In regard to claim 10, ‘919 teaches wherein the endoscope is configured to be inserted into a tubular organ, and the space is formed in part by a wall of the tubular organ (see Claim 18).
In regard to claim 11, ‘919 teaches wherein a cycle of the pressurization and the depressurization per is performed per predetermined period (see Claim 9).
In regard to claim 12, ‘919 discloses an endoscope apparatus comprising: the control device according to claim 1 (see Claim 1); and a pump configured to feed the fluid through the flow passage of the endoscope (see Claim 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN N HENDERSON whose telephone number is (571)270-1430. The examiner can normally be reached Monday-Friday 6am-5pm (PST).
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.
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/RYAN N HENDERSON/Primary Examiner, Art Unit 3795 July 25, 2026
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