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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-5, 7-10, and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over WIPO Publication WO2021/224996A1 to Suyama (hereinafter “Suyama”, paragraph citations correspond to the US-filed version of this document – US Patent Application Publication 2023/0029662) in view of US Patent Application Publication 2009/0043166 to Ishii (hereinafter “Ishii”). Suyama discloses an insertion portion for use with an endoscope comprising:
Regarding claim 1 - a frame (Fig. 5, Element 20) disposed in a distal end portion of the insertion portion; a three-dimensional wiring board (see annotated Fig. 5 below) fixed to the frame, the three-dimensional wiring board comprising: a first surface; a second surface arranged distally relative to the first surface; and a third surface arranged proximally relative to the first surface, a camera mounted on the first surface, and wherein the frame includes a fourth surface contacting the second surface and a fifth surface contacting the third surface (see annotated Fig. 5 below). However, Suyama does not disclose that the first surface is inclined at a first angle relative to a longitudinal direction of the distal end portion. Ishii discloses an insertion portion for an endoscope wherein the first surface (Fig. 3, Element 21) is mated with a frame (Element 24), wherein the first surface is inclined at a first angle relative to a longitudinal direction of the distal end portion (see that surface Element 21 is inclined in Fig. 3). It would have been obvious before the effective filing date of the claimed invention to modify Suyama to include an inclined first surface such as that taught by Ishii in order to enable the endoscope to have a side-view feature (Ishii [0010]).
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Regarding claim 2, Suryama teaches wherein the second surface, the third surface are parallel to the longitudinal direction (see annotated Fig. 5)
Regarding Claim 3, Suryama teaches wherein the fourth surface, and the fifth surface are parallel to the longitudinal direction (see annotated Fig. 5)
Regarding Claim 4, Suryama teaches wherein the three-dimensional wiring board is an MID ([0075])
Regarding Claim 5, Suryama teaches wherein the three-dimensional wiring board includes a recess (empty space of Element 30) surrounded by a wall, the recess includes the first surface as a bottom surface (see annotated Fig. 5 above), the camera includes an optical system (Element 34) and an image sensor (Element 32), the camera is housed in the recess (see annotated Fig. 5 above), and the wall is inserted in a throughhole of the frame (Examiner is interpreting this as a product-by-process limitation. Suyama teaches the wall of the recess is present in the empty space of element 30)
Regarding Claim 7, Suyama and Ishii do not disclose that a first length between the first surface and the second surface is shorter than a second length between the first surface and the third surface. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the length between the first surface and the second surface of Suyama to be shorter than the length between the first and third surfaces since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the insertion portion would not operate differently with the claimed difference in lengths discussed above. Further, Applicant places no criticality on the range claimed, indicating that, in paragraph [0038], that this is done to reduce the size of the device which is a well-known and obvious modification to the prior art (MPEP 2144.04 Section IV Item A.).
Regarding Claim 8, Suyama and Ishii do not disclose wherein the first angle is equal to a second angle formed between an optical axis of the camera and a line perpendicular to the longitudinal direction. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to orient the camera such that the first angle is equal to a second angle formed between an optical axis of the camera and a line perpendicular to the longitudinal direction since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the insertion portion would not operate differently with the claimed difference in angles discussed above. Further, Applicant places no criticality on the range claimed, indicating that, in paragraph [0028] and [0029], that the presence of the angle of inclination is meant to improve the accuracy of the device and changing the angle of Suryama and Ishii would be a well-known and obvious modification to the prior art (MPEP 2144.04 Section IV Item A).
Regarding Claim 9, Suryama teaches wherein the second surface and the third surface are located on one plane (see annotated Fig. 5 above)
Regarding Claim 10, Suryama teaches wherein the fourth surface and the fifth surface are located on the one plane (see annotated Fig. 5 above)
Regarding Claim 13, Suryama teaches wherein the three-dimensional wiring board includes a sixth surface between the first surface and the third surface, and the sixth surface is larger than the third surface (see alternative annotated Fig. 5 below)
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Regarding claim 14, Suryama teaches wherein in a direction orthogonal to the longitudinal direction, the second and third surfaces are located closer to the frame than the first surface (From a top-down view of Fig. 5, the second and third surfaces from the annotated Fig. 5 are closer to the frame than the first surface)
Regarding Claim 15, Suryama teaches wherein at least one of the second surface or third surface is inclined at a second angle relative to a longitudinal direction of the distal end portion (With Ishii teaching a inclined camera based on the modification of Claim 1, Suryama shows that the second or third surface have a second angle of incline of 0)
Regarding Claim 16, wherein the second angle is different from the first angle (With Ishii teaching a inclined camera based on the modification of Claim 1, Suryama shows that the second or third surface have a second angle of incline of 0)
Regarding Claim 17, Suryama and Ishii teach the invention of claim 1, and Suryama teaches that the insertion portion can be used on an endoscope ([0009])
Regarding Claim 18, Suryama teaches an image pickup module comprising: a camera (Element 30, see first annotated Fig. 5 above); and a three-dimensional wiring board (see first annotated Fig. 5 above) comprising: a first surface on which the camera is mounted; a second surface; and a third surface, the first surface located between the second and third surfaces in a longitudinal direction, and the second and third surfaces contacting fourth and fifth surfaces, respectively, of a frame of an endoscope (see annotated Fig. 5 above). However, Suyama does not disclose that each of the second and third surfaces having a first angle relative to the first surface. Ishii discloses an insertion portion for an endoscope wherein the first surface (Fig. 3, Element 21) is mated with a frame (Element 24), wherein the first surface is inclined at a first angle relative to the second and third surfaces which are aside the first surface (see that surface Element 21 is inclined in Fig. 3, first surface would have an angle greater than zero and the second and third surfaces have a relative angle of zero). It would have been obvious before the effective filing date of the claimed invention to modify Suyama to include an inclined first surface such as that taught by Ishii in order to enable the endoscope to have a side-view feature (Ishii [0010]).
Regarding Claim 19, Suryama discloses a method of endoscope manufacture comprising: fabricating a three-dimensional wiring board comprising: a first surface; a second surface arranged distally relative to the first surface; and a third surface arranged proximally relative to the first surface (see first annotated Fig. 5 above), mounting a camera on the first surface(see first annotated Fig. 5 above); bringing the second surface in contact with a fourth surface of a frame, and bringing the third surface in contact with a fifth surface of the frame (see annotated Fig. 5 above). However, Suyama does not disclose that each of the second and third surfaces having a first angle relative to the first surface. Ishii discloses an insertion portion for an endoscope wherein the first surface (Fig. 3, Element 21) is mated with a frame (Element 24), wherein the first surface is inclined at a first angle relative to the second and third surfaces which are aside the first surface (see that surface Element 21 is inclined in Fig. 3, first surface would have an angle greater than zero and the second and third surfaces have a relative angle of zero). It would have been obvious before the effective filing date of the claimed invention to modify Suyama to include an inclined first surface such as that taught by Ishii in order to enable the endoscope to have a side-view feature (Ishii [0010]). Additionally, Suryama does not disclose injecting an adhesive in a gap between the three-dimensional wiring board and the frame; and fixing the three-dimensional wiring board with mounted camera and cured adhesive to a distal end portion of an insertion portion of the endoscope. However, Ishii discloses a method of manufacture of an endoscope insertion portion comprising injecting an adhesive in a gap between the three-dimensional wiring board and the frame; and fixing the three-dimensional wiring board with mounted camera and cured adhesive to a distal end portion of an insertion portion of the endoscope ([0051]). It would have been obvious before the effective filing date of the claimed invention to modify Suryama to include injecting an adhesive in a gap between the three-dimensional wiring board and the frame; and fixing the three-dimensional wiring board with mounted camera and cured adhesive to a distal end portion of an insertion portion of the endoscope such as that taught by Ishii in order to stabilize the image pickup device in the insertion portion to prevent deviations from the expected optical axis of the device.
Regarding Claim 20, Suryama teaches wherein the three-dimensional wiring board includes a recess (empty space of Element 30) including the first surface as a bottom surface, the first surface being surrounded by a wall (see annotated first Fig. 5 above), and the recess houses the camera including an optical system (Element 34) and an image sensor (Element 32)
Allowable Subject Matter
Claims 6 and 11-12 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.
Claim 6 has been marked to have allowable subject matter because Suryama teaches that the second and third surfaces are above the wall.
Claim 11 has been marked to have allowable subject matter because while Suryama discloses a sixth surface (see second annotated Fig. 5 above), Suryama and Ishii do not disclose using an adhesive at that particular surface. Claim 12 has been marked allowable for its dependency on Claim 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JAMES CAREY whose telephone number is (571)270-7235. The examiner can normally be reached Monday-Friday (8am-5pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Carey can be reached at 571-270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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