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
A Species must be elected from Set I:
Set I:
Species A: the nasal guide configured as shown in Fig.2.
Species B: the nasal guide configured as shown in Figs.3, 6, 7 and 10.
Species C: the nasal guide configured as shown in Fig.4.
Species D: the nasal guide configured as shown in Fig.5.
Species E: the nasal guide configured as shown in Fig.8.
Species F: the nasal guide configured as shown in Fig.9.
A Species must be elected from Set II:
Set II:
Species G: the modular endoscope as shown in Figs. 12-16.
Species H: the endoscope as shown in Fig.17.
Species I: the endoscopic peripheral as shown in Fig.18.
Species J: the endoscopic peripheral and cover as shown in Figs.19-21.
Species K: the endoscopic peripheral and cover as shown in Fig.22.
Upon election of Species G, a Species must be elected from Set III:
Set III:
Species L: the endoscope with a battery and transceiver internal to the case, as shown in Fig. 12.
Species M: the endoscope with a battery and transceiver external to the case, as shown in Fig. 16.
Upon election of Species G, a Species must be elected from Set IV:
Set IV:
Species N: the endoscope with the lights partially encircling the camera, as shown in Fig. 14.
Species O: the endoscope with the lights completely encircling the camera, as shown in Figs. 13 and 15.
Note: these multiple species to be elected shall together constitute a single grouping of patentably indistinct species.
These species are independent or distinct because there is a search and/or examination burden for the patentably distinct species as set forth above because the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries) and the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: (a) the inventions require a different field of search ( for example, searching different classes/ subclasses or electronic resources, or employing different search queries); (b) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Brian Owens on 22 June, 2026, a provisional election was made without traverse to prosecute Species A and I, respectively Figs. 2 and 18. Affirmation of this election must be made by applicant in replying to this Office action.
Claims 8 and 12 are withdrawn as being drawn to nonelected Species G (Figs. 12-16), as species G details a lens for the camera and lights, and elected Species I (Fig. 18) does not detail this feature. Claims 6-7 and 11-20 are withdrawn as being drawn to nonelected Species K (Fig.22), as the control is claimed as part of the peripheral and not part of the wireless device (para.157) or a device that is not disclosed as part of the peripheral (para.151) as disclosed in the elected Species I (Fig.18). Claims 1-5 and 9-10 are examined, claims 6-8 and 11-20 are withdrawn.
Note that the drawings would be objected to with respect to claims 6-7, 11 and 13 if these claims are rejoined, as the drawings must show every feature of the invention specified in the claims.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claim 1 reads “the wireless device powers the camera and the one or more lights and displays content captured by the camera” [lines 6-7]. It is clear that the applicant intended to recite functional limitations here instead of method steps in a device claim. “Configured to” language, or the like, should be applied.
Claim 3 reads “the camera captures high definition content… content is captured by default applications of the wireless device”. It is clear that the applicant intended to recite functional limitations here instead of method steps in a device claim. “Configured to” language, or the like, should be applied.
Claim 9 reads “an application is downloaded” [line 1]. It is clear that the applicant intended to recite functional limitations here instead of method steps in a device claim. “Configured to” language, or the like, should be applied.
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.
Claims 1-5 and 9-10 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 pre-AIA the applicant regards as the invention.
In regards to claim 1, the claim recites "the endoscopic peripheral" in line 2. There is insufficient antecedent basis for this limitation in the claim. Therefore, the claim is unclear. For the purposes of prosecution, it will be assumed this is the same as “A peripheral” of line 1.
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 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 9-10 of U.S. Patent No. 12,208,225 (henceforth ‘225). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Present claim 1 ‘225 claim 1 unless noted
A peripheral for a wireless device, comprising:
a flexible cable connecting a first end and a second end of the endoscopic peripheral;
An endoscopic peripheral, comprising:
a flexible cable connecting to a body of the endoscopic peripheral
…a second end of the flexible cable
the first end including at least a camera and one or more lights positioned at a tip of the first end,
the body including at least a camera and one or more lights positioned at a tip of the body,
the tip is configured for internal examination of an area;
the tip is configured for insertion of at least a portion of the body into a body of a patient;
the second end of the flexible cable terminating in a connector configured to physically connect the peripheral to the wireless device external to the area,
a second end of the flexible cable terminating in a connector configured to physically connect the endoscopic peripheral to a wireless electronic device external to the body of the patient and separate from the endoscopic peripheral,
the wireless device powers the camera and the one or more lights and displays content captured by the camera.
the endoscopic peripheral including at least the camera and the one or more lights is configured to receive power conducted from the wireless electronic device through the flexible cable
the endoscopic peripheral is configured to communicates content captured by the camera through the flexible cable to the wireless electronic device
(as the wireless electronic device is not positively claimed, this limitation is actually regarding the configuration of the peripheral)
Claim 2 is identical to claim 2 of ‘225.
Claim 3 is anticipated by claim 3 of ‘225.
Claim 4 is anticipated by claim 4 of ‘225.
Claim 5 is anticipated by claim 5 of ‘225.
Claim 9 is anticipated by claim 9 of ‘225.
Claim 10 is identical to claim 10 of ‘225.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 10,945,589 (henceforth ‘589). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Present claim 1 ‘589 claim 12 unless noted
A peripheral for a wireless device, comprising:
a flexible cable connecting a first end and a second end of the endoscopic peripheral;
An endoscopic peripheral, comprising:
flexible cable a first end of the flexible cable,
a second end of the flexible cable
the first end including at least a camera and one or more lights positioned at a tip of the first end,
the first end including at least a camera and one or more lights enclosed by a tip at the first end
the tip is configured for internal examination of an area;
the tip is rounded for insertion of a portion of the first end into a body of a patient
the second end of the flexible cable terminating in a connector configured to physically connect the peripheral to the wireless device external to the area,
a second end of the flexible cable terminating in a plug configured to physically connect the endoscopic peripheral to a wireless device including a display that is external to a body of a patient,
the wireless device powers the camera and the one or more lights and displays content captured by the camera.
the wireless device powers the camera and the one or more lights and displays content captured by the camera,
Claim Rejections - 35 USC § 103
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, 4-5 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Schwartz et al. (US PGPUB 2010/0095969) in view of Haviv (US PGPUB 2006/0183971).
In regards to claim 1, Schwartz discloses a peripheral for a wireless device, comprising:
a flexible cable [11, Figs.1-4] connecting a first end [12b, 112, Figs.1-4] and a second end [12 adjacent to 14, Fig.3a] of the endoscopic peripheral;
the first end including at least a camera [“camera”, 28, Fig.4e, para.74, 87] and one or more lights [19, Fig.4e, para.72] positioned at a tip of the first end,
the tip is configured for internal examination of an area [Fig.1, para.69];
the second end of the flexible cable terminating in a connector [14, Figs.3a-b, para.70] configured to physically connect the peripheral to the wireless device external to the area [20, Fig.1, para.69; note that the applicant has not positively claimed the electronic device],
wherein the electronic device displays content captured by the camera [23, Figs.1-2, para.73-74].
However, Schwartz does not positively disclose wherein the wireless device powers the camera and the one or more lights.
Schwartz further discloses that the wireless device comprises a power source [23D, Fig.6, para.78] and is electrically connected to the camera [para.22, 74].
Haviv teaches an analogous endoscopic peripheral [200, Fig.1], wherein a camera [251, Fig.4, para.41] and one or more lights [251, Fig.4, para.41] of the peripheral are powered [para.7, 38, 41] by a wireless device [100, Figs.1-3] connected to the peripheral.
Therefore, it would have been obvious to one having ordinary skill in the art to modify the endoscopic peripheral taught by Schwartz to have its camera and one or more lights configured to be powered by the wireless device. This would be done for the predictable results of powering the camera and lights.
In regards to claim 4, Schwartz in view of Haviv teaches the endoscopic peripheral of claim 1, wherein the first end is rigid [all objects have some degree of rigidity] and encloses a portion of the camera and the one or more lights [Schwartz: Fig.4e].
In regards to claim 5, Schwartz in view of Haviv teaches the endoscopic peripheral of claim 1, wherein the first end is cylindrically shaped [Schwartz: Fig.4e].
In regards to claim 9, Schwartz in view of Haviv teaches the endoscopic peripheral of claim 1, wherein an application is downloaded to the electronic device for interfacing with the endoscopic peripheral [the electronic device is not positively claimed here; as such, such an electronic device could be used].
In regards to claim 10, Schwartz in view of Haviv teaches the endoscopic peripheral of claim 1, wherein the flexible cable is configured to be bent or positioned and thereafter hold the position [Schwartz: portion 13, Fig.1, para.69; the flexible cable 11 could be bent and held in this fashion].
Allowable Subject Matter
Claims 2-3 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, the claim objections, and the double patenting rejections set forth in this Office action, and to include all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: The prior art fails to teach, among other features, an endoscope comprising:
a flexible cable connecting a first end and a second end;
the first end comprising at a tip thereof a camera and one or more lights, the first end configured for insertion into a body of a patient;
the second end terminating in a connector configured to connect the endoscope to a wireless device external to the body of the patient, the camera and the one or more lights configured to be powered by the electronic device, the electronic device configured to display content captured by the camera;
the electronic device powers the camera and the one or more lights and displays content captured by the camera, and
wherein the endoscope is configured to comply with UPnP standard when connecting to the electronic device.
Schwartz et al. (US PGPUB 2010/0095969) teaches the above except for the camera and lights being configured to be powered by the electronic device, and that the endoscope is configured to comply with UPnP standard when connecting to the electronic device.
Haviv et al. (US PGPUB 2010/0095969) teaches an analogous endoscope configured to be connected to an electronic device, where lights and camera of the endoscope are powered by the electronic device.
Lym et al. (US PGPUB 2004/0133896) teaches a camera configured to comply with UPnP standard when connecting to electronic devices.
Tanaka (US 2002/0051080) teaches an imaging peripheral configured to comply with UPnP standard when connecting to electronic devices.
In obvious combination, the above prior art teaches the above except for the endoscope being configured to comply with UPnP standard when connecting to the electronic device.
There is no reason or suggestion provided in the prior art to modify the above prior art to have the additional features as claimed above, and the only reason to modify the references would be based on Applicant's disclosure, which is impermissible hindsight reasoning.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tanaka (US 2002/0051080)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON B FAIRCHILD whose telephone number is (571)270-5276. The examiner can normally be reached 8:30am-5pm Monday-Friday.
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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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/AARON B FAIRCHILD/Primary Examiner, Art Unit 3795
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