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 Arguments
Applicant’s arguments with respect to claims 1-20 have been considered but are moot because of the new ground of rejection as discussed below.
Applicant argues independent claim 1, as amended, recites a medical device comprising a handle and a shaft “defining a longitudinal axis,…….wherein the mirror is positioned along the longitudinal axis proximal to the reflector and distal to the light source, and wherein the light source is proximal to the imaging device.” Shahinian does not disclose, explicitly or implicitly, each and every feature claimed because neither angle reflectors disclosed in Shahinian is proximal to the other angled reflector and distal to the Shahinian’s light guide 1420. The angled reflectors of the periscope would be at the same position along the longitudinal axis of Shahinian’s endoscope 1400, at pivot axis 1414. None of the cited references cures the deficiencies of Shahinian discussed above. A person of ordinary skill in the art would have found no reason to attempt to modify Shahinian’s periscope along axis 1414 to extend along longitudinal axis of the endoscope 1400, as this would defeat the purpose to accommodate pivoting of camera 1402 (Applicant’s remark on pages 8-10). This argument is respectfully traversed.
Shahinian discloses one or more interface units, such as one or more periscopes to be described in connection with FIG. 16, may receive light from the distal end(s) of the light source. The periscopes direct, e.g., reflect, light into a light exit unit which is located around the right and left pupils and direct light out to illuminate the ROI 115 (col. 12, lines 41-47). Shahinian also discloses one or more periscopes may be used along with at least one fiber optic cable to direct light from light sources to the distal end of the camera to illuminate the ROI. e.g. a fiber optic cable that receives light from a light source and provides light to one end of the periscope. The periscope comprise angle reflectors e.g., at 45 degrees, for directing light from one (or entrance) end to another (or exit) end of the periscope. The angled reflectors may be one mirror at the periscope entrance end to receive light from the fiber optic 1420 and reflect light to another mirror located at the exit end of the periscope. The second mirror reflects the light from the first mirror to exit out of the periscope exit end and to reflect from a surface, such as the internal surface of the camera portion 1402, which is internally coated. Light reflected from the internal surface of the camera housing is directed to exit from the front surface of the camera to illuminate the ROI 115 (see col. 25, line 47-col. 26, line 3, figure 16). As the reflectors have angle (e.g.,, at 45 degrees) and fiber optic cable along longitudinal axis provide lights to one end of the periscope, at least one periscope which may be used along with at least one fiber optic cable to direct light from light source to the distal end of the camera, the mirror at the entrance of the periscope receives the light from the fiber optic cable and provides the light to the reflector/second mirror at the other end (exit) of the periscope to exit the periscope or the reflect surface of the camera, the mirror (at the entrance) is obviously positioned along the longitudinal axis proximal to the reflector (second mirror at other end/exit of the periscope and/or surface of the camera portion that reflects the light) and distal to the light source so that periscope, which may be used along the optic cable (light source) to direct light from light source to the mirror at the entrance first, then mirror at the entrance receives the light and provides it to the reflector/second mirror and/or surface that reflects light of the camera.
With respect to Applicant argument that one of the lugs 1438 comprises the periscope connected to the light guide 1420…” Then, Applicant alleged that the angled reflectors of the periscope (corresponding to lugs 1438) would be at the same position along the longitudinal axis of Shahinian’s endoscope 1400, at pivot axis 1414, Examiner notices Shahinian does not describe the periscope are along the lugs 1438. Shahinian merely describes “illustratively, one of the lugs 1438 comprises the periscope connected to the light source 1420”. Even based on this example, the periscope is part of or comprised in the lugs. Therefore, the periscope cannot be along the pivot axis 1414 as alleged by the Application.
See also Ooshima et al. (US 6181369) for teaching of mirror (10) is positioned along longitudinal axis proximal to the reflector (guiding portion 12 or prism 5) and distal to the light source (9), wherein the light source (9) is proximal to the imaging device (image sensor/CCD unit 7 disposed in the tip of the insertion portion (see include, but are not limited, figures 1, 10, col. 4, lines 15-23, 30-51).
With respect to Applicant’s argument that a person of ordinary skill in the art would have found no reason to attempt to modify Shahinian’s periscope along axis 1414 to extend along the longitudinal axis of the endoscope (page 9 and also Applicant argues about the combination on page 10), Examiner respectfully disagrees.
As discussed above, Shahinian does not disclose periscope along axis 1414.
Furthermore, discussing the question of obviousness of claimed subject matter involving a combination of known elements, KSR Int'l v. Teleflex, Inc., 127 S. Ct. 1727 (2007), explains: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida [v. AG Pro, Inc., 425 U.S. 273 (1976)] and Anderson ’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 163 USPQ
673 (1969). In this case, all limitations recited in the claims are known by prior art and benefits/motivation for combination of the teaching is provided. Therefore, the combination is proper.
With respect to Applicant’s argument that independent claims 12, 18 recites similar features with respect to media device of claim 1 (page 10), Examiner respectfully disagrees.
Amended claim 1 recites “the mirror is positioned along the longitudinal axis proximal to the reflector and distal to the light source, and wherein the light source is proximal to the imaging device” while claims 12 and 18 recites “the light source is proximal to the mirror, the reflector, and the imaging device”. Thus, claims 12 and 13 merely recite the light source is proximal to either the mirror, the reflector, or the imaging device.
Although Shahinian obviously discloses the mirror is positioned along the longitudinal axis proximal to the reflector and distal to the light source as discussed below, the provide a clear support that the teaching is well-known, Ooshima et al. (US 6181369) is also relied on for disclosure of this teaching as discussed below.
Claim Rejections - 35 USC § 103
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 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.
Claims, 1, 3-6, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Shahinian et al. (US 11529042) in view of Ooshima et al. (US 6181369) .
Note: all documents that are directly or indirectly incorporated by reference in its entirety including US Ser. No. 12946839 (corresponding to 20110115882 – see col. 1, lines 5-16) are treated as part of the specification of Shahinian (see MPEP 2163.07b).
Regarding claim 1, Shahinian discloses a medical device (endoscope – figures 14-16, col. 5, lines 16-32, col. 24, lines 54-65) comprising:
a handle (handle 1406 – see col. 5, lines 22-24, col. 24, lines 57-58); and
a shaft extending distally from the handle and defining a longitudinal axis, wherein the shaft defines a lumen that terminates at a distal end of the shaft, the distal end including an imaging device (a shaft 1410 extending distally from the handle 1406 and defining a longitudinal axis, wherein the shaft 1410 defines a lumen/channel that terminates at a distal end of the shaft, the distal end including an imaging device with camera portion 1402 – see include, but are not limited to, figures 14-16, col. 24, lines 54-col. 25, line 12), wherein a distal end portion of the shaft comprises a transparent or translucent material (distal end portion of the shaft comprises glass or plastic – see figure 16, col. 26, lines 6-10) and includes:
a light source (light source/light channel that provides light/illuminators – see include, but are not limited to, figures 7A-8, col.12, lines 21-60, col. 15, lines 28-32, col. 26, lines 13-20);
a mirror (first mirror receives light from the fiber optic 1420 – see include, but are not limited to, figures 14-16, col. 25, lines 56-65); and
a reflector (a reflector or second mirror or surface that reflects the light of the first mirror to exit out of the periscope exit end or to reflect from the surface – see include, but are not limited to, figures 14-16, col. 25, lines 56-65);
wherein the mirror is positioned at one end (entrance) of periscope for to receive light from light source and provide the received light to the reflector, the light source is proximal to the imaging device (wherein the first mirror is positioned to receive light from light source over fiber optic cable with light channel/guide and provides the reflector/second mirror/surface that reflects light, the light source is proximal to the imaging device with camera portion 1402– see include, but are not limited to, figures 14-16, col. 25, line 39-col. 26, line 25, col. 12, lines 35-60).
Shahinian does not explicitly disclose mirror is positioned along longitudinal axis proximal to the reflector and distal to the light source.
Additionally and/or alternatively, Ooshima discloses a light source (9), a mirror (10); and a reflector (guiding portion 12 or prism 5), wherein the mirror (10) is positioned along longitudinal axis (longitudinal axis of video scope) proximal to the reflector (guiding portion 12 or prism 5) and distal to the light source (9), and wherein the light source (9) is proximal to the imaging device (image sensor/CCD unit 7 disposed in the tip of the insertion portion (see include, but are not limited, figures 1, 10, col. 4, lines 15-23, 30-51).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Shahinian with the explicit teaching of mirror is positioned along the longitudinal axis proximal to the reflector and distal to the light source as taught by Ooshima in order to yield predictable result of reducing size, cost of the videoscope/endoscope (see col. 1, lines 41-45, col. 2, lines 8-11).
Regarding claim 3, Shahinian in view of Ooshima discloses the medical device of claim 1, wherein the light source is an RGB LED configured to emit light at different wavelengths (RGB LED configured to provide light at different wavelengths or frequencies -see include, but are not limited to, Shahinian: figures 2A, 8, 16, col. 11, lines 53-60, col. 12, lines 21-34, 43-60, col. 13, lines 15-22).
Regarding claim 4, Shahinian in view of Ooshima discloses the medical device of claim 1, wherein the transparent or translucent material comprises glass or a polymer (see Shahinian: glass – col. 26, lines 7-10).
Regarding claim 5, Shahinian in view of Ooshima discloses the medical device of claim 1, wherein the mirror forms an angle ranging from about 300 to about 600 relative to the longitudinal axis (e.g., periscope comprises angled reflectors may be one mirror at the periscope entrance end is, e.g., 45 degrees – see Shahinian: figure 26, col. 25, lines 56-62).
Regarding claim 6, Shahinian in view of Ooshima discloses the medical device of claim 5, wherein the angle formed by the mirror is about 450 (see Shahinian: figure 26, col. 25, lines 56-62 and discussed in the rejection of claim 5 above).
Regarding claim 11, Shahinian in view of Ooshima discloses the medical device of claim 1, wherein the reflector is proximal to the imaging device (first mirror is proximal to the imaging 1402 – see include, but are not limited to, Shahinian: figure 16, col. 25, lines 47-67).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Shahinian et al. (US 11529042) in view of Ooshima et al. (US 6181369) as applied to claim 1 above, and in view of Thomas et al. (US 20190107275).
Regarding claim 7, Shahinian in view of Ooshima discloses the medical device of claim 1, wherein the mirror comprises a portion of the transparent or translucent material (mirror comprises portion of material such as plastic, glass, etc. – see for example, col. 25, lines 55-65, col. 26, lines 7-19).
However, Shahinian does not explicitly use the term “etched portion”.
Thomas discloses a mirror comprises an etched portion of transparent or translucent material (mirror platform comprises a translucent portion 165/266/465/665/765 of translucent material such as acid etched glass (see paragraphs 0016, 0026, 0048,0062).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Shahinian with the teaching of “etched portion” of transparent or translucent material as taught by Thomas in order to yield predictable result of achieving different lighting effect (paragraph 0048).
Claims 2 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Shahinian et al. (US 11529042) in view of Ooshima et al. (US 6181369) as applied to claim 1 above, and in view of Griffin (US 20200113424).
Regarding claim 2, Shahinian in view of Ooshima discloses the medical device of claim 1, wherein the light source comprises a light emitting diode (LED) and surrounding the lumen (light source comprises LEDs through illuminators 150/1442 in round shape and arranging around lumen/channel – see include, but are not limited to, figures 2A-2B, 5-7B, 16, col. 5, lines 4-15, col. 12, lines 21-34, 43-60, col. 26, lines 4-10). However, Shahinian does not explicitly disclose the light source having an annular shape.
Griffin discloses light source comprises a light emitting diode (LED) having an annular shape and surrounding the lumen (light source comprises a light emitting diode (LEDs) 105 with LED emitter 109 having a ring shape or in circular or ring illumination and surrounding the lumen/working channel – see include, but are not limited to, figures 2-3, paragraphs 0031-0033, 0035).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Shahinian with the teaching of light source having an annular shape as taught by Griffin in order to yield predictable result of allowing the user to clearly image/see the optical target (see paragraph 0031).
Regarding claim 8, Shahinian in view of Ooshima discloses the medical device of claim 1, wherein the reflector comprises coating of a surface (coating internally surface of second mirror/reflector – see col. 25, line 60-65). However, Shahinian does not explicitly a metallic coating.
Griffin discloses reflector comprises a metallic coating (the reflector includes an internal reflection surface. One means for mirroring the internal reflection surface is the apply a layer of silver -paragraph 0055).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Shahinian with the teaching of metallic coating of surface of reflector in order to yield predictable result of improving reflection of light (for example, greater than 95% or preferably greater than 99% of incident light – see paragraph 0055).
Regarding claim 9, Shahinian in view of Ooshima and Griffin discloses the medical device of claim 8, wherein the metallic coating comprises silver (layer of silver – see for example, Griffin: paragraph 0055).
Regarding claim 10, Shahinian in view of Ooshima discloses the medical device of claim 1, wherein the reflector may be a mirror (figures 13-14,16-17, col. 25, lines 56-col. 26, line 21). However, Shahinian does not explicitly disclose the reflector has an annual shape.
Griffin discloses a reflector has an annular shape (e.g., ring lens 201 is adapted to reflect or redirect the light from the LED 105, the ring lens 201 includes a ring-shaped body – see for example, paragraph 0036, figure 3. The ring lens 201 is interpreted as a “reflector” because it reflects the light and the “ring-shaped” body or ring lens is read on “annular shape”).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Shahinian with the teaching of reflector has an annular shape as taught by Griffin in order to yield predictable result of improving the reflectance and redirection of the light within the ring lens 201 (see paragraph 0036).
Claims 12-13, 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shahinian et al. (US 11529042) in view of Griffin (US 20200113424).
Regarding claim 12, Shahinian in view of Ooshima and Griffin discloses the medical device comprising:
a handle; and
a shaft extending distally from the handle and defining a longitudinal axis, wherein the shaft defines a lumen that terminates at a distal end of the shaft, the distal end including an imaging device, wherein a distal end portion of the shaft comprises a transparent or translucent material and includes:
a light source;
a mirror; and
a reflector (see similar discussion in the rejection of claim 1, and figures 14-17, col. 24, line 55-col. 26, line 20);
wherein the light source is proximal to the mirror, the reflector, and the imaging device (see similar discussion to reject the last limitation of claim 1 and discussion to reject limitation of claim 2. See also Griffin: figures 2-3, 5b-5d, paragraphs 0032, 0036).
Shahinian does not explicitly disclose wherein the light source has an annular shape.
Griffin discloses light source comprises a light emitting diode (LED) having an annular shape and surrounding the lumen (light source comprises a light emitting diode (LEDs) 105 with LED emitter 109 having a ring shape or in circular or ring illumination and surrounding the lumen/working channel – see include, but are not limited to, figures 2-3, paragraphs 0031-0033, 0035).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Shahinian with the teaching of light source having an annular shape as taught by Griffin in order to yield predictable result of allowing the user to clearly image/see the optical target (see paragraph 0031).
Regarding claim 13, the additional limitations that correspond to the additional limitations of claim 3 are analyzed as discussed in the rejection of claim 3.
Regarding claim 15, the additional limitations that correspond to the additional limitations of claim 4 are analyzed as discussed in the rejection of claim 4.
Regarding claim 16, Shahinian in view of Griffin discloses the medical device of claim 12, wherein the mirror and the reflector are configured to reflect light emitted by the light source through the transparent or translucent material (e.g., glass, plastic, polymer – see include, but are not limited to, Shahinian: col. 25, line 55-col. 26, line 20; Griffin: paragraphs 0038, 0057, 0066).
Regarding claim 17, Shahinian in view of Griffin discloses the medical device of claim 12, wherein each of the light source, the mirror, and the reflector surrounds the lumen (each of the light source, the mirror, and the reflector/second mirror surrounds the lumen/working channel – see discussion in the rejection of claim 2 and see include, but are not limited to, Shahinian: figures 5, 8, 14-17; Griffin: figures 2-3, 6-7, paragraphs 0038, 0059, 0065).
Regarding claim 18, limitations of a medical device that correspond to the limitations of medical device in claim 12 are analyzed as discussed in the rejection of claim 12. In particular, Shahinian discloses a medical device comprising:
a handle (see figure 14 and discussion in the rejection of claim 1); and
a shaft extending distally from the handle and defining a longitudinal axis, wherein the shaft defines a lumen that terminates at a distal end of the shaft, the distal end including an imaging device, wherein a distal end portion of the shaft comprises a transparent or translucent material and includes:
a light source;
a mirror; and
a reflector (see figures 14-16 and discussion in the rejection of claim 1 or claim 12);
wherein the light source is proximal to the mirror, the reflector, and the imaging device (the light source through the guideline is proximal to the first mirror, reflector/second mirror, and the imaging/camera portion – see figures 2A, 5, 14-16, col. 25, line 46-col. 26, line 25); and
wherein the mirror and the reflector are configured to reflect light emitted by the light source outward from the medical device through the transparent or translucent material (mirror and the reflector are configured to reflect light emitted by the light source through channel guide outward from the media device through the transparent or translucent material such as glass or plastic of the illuminators included in the body portion 1436 – see include, but are not limited to, figures 15-17, col. 25, line 46-col. 26, line 38). However, Shahinian does not explicitly disclose the light source radially outward from the media device through the transparent or translucent material.
Griffin discloses light source radially outward from medical device through transparent or translucent material (a plurality of LEDs adjacent to a surface of the ring lens, the LEDs positioned to radially transmit light into the ring lens wherein the reflector is adapted to reflect the light longitudinally from the medical device through transparent or translucent material such as polymer, glass, plastic – see include, but are not limited to, paragraphs 0059, 0066).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Shahinian with the teaching of light source radially outward from the media device through translucent or transparent material as further taught by Griffin in order to yield predictable result of providing superior illumination and visualization within as compact a package as possible (paragraph 0010) or allowing the user to clearly image or see the optical target (paragraph 0031).
Regarding claim 19, Shahinian in view of Griffin discloses medical device of claim 18, wherein each of the light source, the mirror, and the reflector completely surrounds the lumen (see similar discussion and citations in the rejection of claim 17).
Regarding claim 20, Shahinian in view of Griffin discloses the medical device of claim 18, wherein the mirror is longitudinally between the light source and the reflector (wherein the first mirror is longitudinal between the light source provided with light channel/guide and the reflector/second mirror/surface of the camera – see include, but are not limited to, figures 14-17, col. 12, lines 35-60, col. 25, line 39-col. 26, line 25 and discussion in “response to arguments” above).
See also the teaching in Ooshima et al. (US 6181,369: figures 1, 10, wherein the mirror (10) is longitudinally between the light source (9) and the reflector (12,5).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Shahinian et al. (US 11529042) in view of Griffin (US 20200113424) as applied to claim 12, and further in view of Thomas et al. (US 20190107275).
Regarding claim 14, Shahinian discloses the medical device of claim 12, wherein the mirror comprises a portion of the transparent or translucent material (see col. 25, lines 55-65, col. 26, lines 3-20), wherein the reflector comprises coating of a surface (coating internally surface of second mirror/reflector – see col. 25, line 60-65). However, Shahinian does not explicitly disclose a metallic coating, etched portion of translucent or transparent material.
Griffin discloses reflector comprises a metallic coating (the reflector includes an internal reflection surface. One means for mirroring the internal reflection surface is the apply a layer of silver -paragraph 0055).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Shahinian with the teaching of metallic coating of surface of reflector in order to yield predictable result of improving reflection of light (for example, greater than 95% or preferably greater than 99% of incident light – see paragraph 0055).
Thomas discloses a mirror comprises a portion of transparent or translucent material (mirror platform comprises a translucent portion 165/266/465/665/765 of translucent material such as acid etched glass (see paragraphs 0016, 0026, 0048,0062).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Shahinian with the teaching of “etched portion” of transparent or translucent material as taught by Thomas in order to yield predictable result of achieving different lighting effect (paragraph 0048).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hashimoto et al. (US 20170339377) discloses endoscope with light source is proximal to mirror and reflector and camera of an endoscope (see figures 3, 5-6, paragraph 0044).
Duckett, III (US 20220061643) discloses endoscope comprises mirror (408) to reflector (410,412) proximal to imaging device (see figures 4-6).
Aloni et al. (US 20230240536) discloses endoscope camera assembly comprising light source connected to mirror and reflector and camera (see figures 3-4).
Capriotti et al. (US 20220221696) discloses thermal imaging endoscope with mirror, reflector/hot mirror, light source (see figure 3, paragraphs 0011-0012).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 2426
September 15, 2026
