Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claim 24 is objected to because of the following informalities: the claim refers to “the a” where, given its dependency, it should just be “a”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 19 is 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 19 states “wherein the electronic processing board and the extension are a printed circuit boards” where “a printed circuit boards” is unclear. Does this mean that the electronic processing board is a printed circuit board and that the extension is a separate printed circuit board? Is this a typographical error and the two are a printed circuit board as opposed to some other type of circuit board? Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 18, 21-23, 29, and 30 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over King et al. (US 2014/0275763) in view of Thompson (US 6,007,484).
Regarding Claim 18, King discloses:
An endoscope comprising:
a shaft (104);
a two part handle (102/114) comprising:
a proximal handle housing (114); and
a distal handle housing (102) rigidly mounted to the shaft; and
an electronic processing board (112 includes 172; see Paragraph 0119 for example) mounted in the distal handle housing in a position fixed with respect to the shaft (see Fig. 13, for example, showing 112 with its internal components inserted into 102),
King does not explicitly disclose the electronic processing board further comprising an extension that extends through the shaft and terminating at a distal end of the shaft; wherein the extension includes a camera assembly and at least one light source, camera assembly and at least one light source located at the distal end of the shaft, and the extension includes power lines and data communication pathways from the electronic processing board and the camera assembly.
Thompson teaches a similar endoscope assembly with an extension (212) having a camera (204) and lights (214) for acquiring an image from within a patient. The Examiner notes that King also includes a camera and lights, but does not include details related to an extension. Thompson’s flexcable can be used with King’s device to transmit power, control, and data to and from the camera. Therefore, it would have obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify King’s device to include Thompson’s extension. Such a modification provides a known means for transmitting power, control signals, and data to the camera and lights as is known in the art.
Regarding Claim 21, King as modified further discloses wherein the extension is a ribbon cable or a flex cable (see above, Thompson teaches that the extension is flexcable 212).
Regarding Claim 22, King as modified further discloses wherein the light source comprises at least one LED (King – Paragraph 0063, the lights can be LEDs).
Regarding Claim 23, King as modified further discloses wherein the light source is located to project light generally toward a field of view of the camera assembly (see King Fig. 4 showing the LEDs 202 facing the same direction as the camera 198; this is standard so that the field of view is illuminated).
Regarding Claim 29, King as modified further discloses wherein the light source is arranged to provide light from a side of the camera assembly (both King and Thompson show the light being on a side of the camera assembly).
Regarding Claim 30, King as modified further discloses wherein the camera assembly comprises an image sensor and a lens (see King – Paragraphs 0063 and 0153 discussing a CCD and lens in front of the CCD; see also, Thompson – Fig. 11 showing lens 206 and sensor 204).
Claims 24 and 25 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over King et al. (US 2014/0275763) and Thompson (US 6,007,484), as applied to claims 18 and 22 above, and further in view of Robertson (US 2010/0286475).
King and Thompson disclose the invention substantially as claimed as stated above.
Regarding Claims 24 and 25, they do not explicitly disclose wherein the light source is located to provide indirect lighting that directs light outside of the a field of view of the camera assembly; and wherein the light source comprises a direct light source that provides light generally toward a field of view of the camera assembly and an indirect light source. Robertson teaches having two light sources, one to provide diffused light (162 going through 140) and direct light (148). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify King and Thompson’s device to include Robertson’s indirect and direct light source. Such a modification provides alternative lighting to the treatment site (see also, Williams et al. (US 2002/001202) cited in the Conclusion for addressing the issue of direct and indirect illumination).
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 18-20, 30, 32-33, and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 13, and 17 of U.S. Patent No. 12,200,363. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent anticipates the application’s claims. The patent claims an endoscope comprising a shaft, a proximal and distal handle section, and an electronic processing board (PCB) in the distal housing with an extension having an image sensor and light. Claim 1 also claims that the PCB has a base and the extensions such that the limitations of claims 19 and 20 are met. Claim 9 includes a lens similar to that of claim 30. Claim 13 further includes handle housing relative rotation and hall effect sensors. Claim 17 includes two opposing magnets as in claim 35.
Claims 18 and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of U.S. Patent No. 9,907,457. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent anticipates the application’s claims expect for the light. The patent claims an endoscope comprising a shaft, a proximal and distal handle section, and an electronic processing board (PCB) in the distal housing with an extension having an image sensor, but no light is claimed. Cameras need light to illuminate the field of view within the patient as is well-known in the art. Therefore, including one in the distal end would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention. Such a modification provides light to the target area for the camera. Claim 17 includes a lens similar to that of claim 30 of the application.
Claims 18-20 and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. 10,616,491. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent anticipates the application’s claims expect for the light. The patent claims an endoscope comprising a shaft, a proximal and distal handle section, and an electronic processing board (PCB) in the distal housing with an extension, but no camera and light. Cameras need light to illuminate the field of view within the patient as is well-known in the art. Therefore, including a camera and light in the distal end would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention. Such a modification provides light to the target area for the camera to acquire images.
Claim 1 also claims that the PCB has a base and the extensions such that the limitations of claims 19 and 20 are met.
Claim 17 includes a lens similar to that of claim 30 of the application.
Claims 18 and 32-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,128,804 in view of Thompson (US 6,007,484). The patent claims proximal and distal handle housings, an electronic processing board, an image sensor, relative rotation, Hall sensors, and magnets. The patent does not disclose a light and an extension. Thompson teaches using an extension (212) to carry power and signals to a camera and light. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the patent to include the extension and light.
The patent further claims wherein the electronic processing board is connected to a user interface displaying an image generated by the image sensor, and wherein a rotational orientation of the image is altered by a change in the rotational position signal (claim 2).
Allowable Subject Matter
Claims 26-28 and 31 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 19-20 and 32-35 are rejected based on the Double Patent rejections above, but would be allowable upon entry of a proper Terminal Disclaimer (other than claim 19, which as a 112b problem).
The following is a statement of reasons for the indication of allowable subject matter: The primary reason the claims are allowable over the prior art is that the prior art fails to disclose or render obvious the claimed endoscope with the varying lighting characteristics of claims 26-28 and 31. The prior art also fails to disclose or render obvious those features in the claims rejected under Double Patenting. These include wherein the extension is a printed circuit board and the electronic processing board and extension are a single printed circuit board. The relative rotation between the proximal and distal housing about a long axis of the shaft is also not true of the prior art. King’s proximal housing does not rotate in that direction. Although King’s housing has some rotation (124 rotates), the circuit board is not mounted in that part of the housing.
Assuming the formal matters are addressed, these claims should overcome the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Williams et al. (US 2002/0001202).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY JAY NEAL whose telephone number is (313)446-4878. The examiner can normally be reached Mon-Fri 7:30-5:30.
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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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/TIMOTHY J NEAL/Primary Examiner, Art Unit 3795
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