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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a controller” in claims 11 and 20.
Regarding the controller, paragraph [0047] discloses “an integrated screen/controller”. Therefore, the structure determined sufficient to perform the function of controlling a position of the cameras is a screen or functional equivalent.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 1 – 5, 8 – 11, 13 – 16 and 18 - 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tingvatn (US 2020/0129047 A1).
Regarding claim 1, Tingvatn discloses a pelvic exam device comprising:
an insert (Fig. 6, refs. 2, 28), wherein the insert has a proximal end (located closest to the handle) and a distal end, and wherein the distal end of the insert has a dome shape (Fig. 6, see remarked Fig. 6 below);
a probe (refs. 24, 20, 22, 26, 21) that mounts to the insert (Fig. 5), wherein the probe includes a distal end that is positioned within the insert (Fig. 5); and
one or more cameras mounted to the distal end of the probe (paragraph [0032], ref. 24).
PNG
media_image1.png
517
741
media_image1.png
Greyscale
Regarding claim 2, Tingvatn discloses the device of claim 1, further comprising an opening in the dome shape that forms the end of the insert (ref. 10, Figs. 1 - 2).
Regarding claim 3, Tingvatn discloses the device of claim 2, wherein the opening is off-center in the dome shape (ref. 10 is shown to be off-center, see Fig. 2).
Regarding claim 4, Tingvatn discloses the device of claim 2, further comprising an instrument port formed in the insert, wherein the instrument port is sized to receive a tool to perform an operation or procedure (Figs. 1 – 2, ref. 6).
Regarding claim 5, Tingvatn discloses the device of claim 4, wherein the instrument port aligns with the opening such that the tool can access a patient into which the insert has been placed (Figs. 1 – 2).
Regarding claim 8, Tingvatn discloses the device of claim 1, further comprising one or more light sources mounted to the probe and configured to illuminate the insert (paragraph [0028], ref. 14).
Regarding claim 9, Tingvatn discloses the device of claim 1, further comprising one or more light sources mounted to the insert (paragraph [0028], ref. 14, Fig. 5).
Regarding claim 10, Tingvatn discloses the device of claim 9, wherein the one or more light sources include an edge light that illuminates a perimeter of the insert (Fig. 5 shows the light source located on an edge or perimeter of the insert).
Regarding claim 11, Tingvatn discloses the device of claim 1, further comprising a controller that controls a position of each of the one or more cameras within the insert (paragraphs [0013, 32] discloses a control unit).
Regarding claim 13, Tingvatn discloses a method of making a pelvic exam device (Abstract), the method comprising:
forming an insert that has a proximal end and a distal end, wherein the distal end of the insert is formed to have a dome shape (see remarked Fig. 6 below which shows the insert and therefor is formed);
forming a probe (refs. 24, 20, 22, 26, 21) that mounts to the insert, wherein the probe includes a distal end that is sized to fit within the insert (Fig. 5); and
mounting one or more cameras (ref. 24) mounted to the distal end of the probe (Fig. 5).
PNG
media_image1.png
517
741
media_image1.png
Greyscale
Regarding claim 14, Tingvatn discloses the method of claim 13, further comprising forming an opening in the dome shape that forms the distal end of the insert (Figs. 1 – 2 show an opening ref. 10 that forms part of the distal end of the insert).
Regarding claim 15, Tingvatn discloses the method of claim 14, wherein the opening is formed off-center in the dome shape (Fig. 2).
Regarding claim 16, Tingvatn discloses the method of claim 13, further comprising forming an instrument port (ref. 6) in the insert, wherein the instrument port is sized to receive a tool to perform an operation or procedure (Fig. 3).
Regarding claim 18, Tingvatn discloses the method of claim 13, further comprising mounting one or more light sources to the probe to illuminate the insert (paragraph [0028], ref. 14).
Regarding claim 19, Tingvatn discloses the method of claim 18, wherein the one or more light sources include an edge light that illuminates a perimeter of the insert (the light is shown to be mounted to a perimeter or edge wall of the insert).
Regarding claim 20, Tingvatn discloses the method of claim 13, further comprising mounting a controller to the probe that controls a position of each of the one or more cameras within the insert (paragraphs [0013, 32] discloses a control unit).
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.
Claim(s) 6, 7 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tingvatn (US 2020/0129047 A1) in view of Levy et al. (US 2013/0172670 A1).
Regarding claim 6, Tingvatn discloses the device of claim 1, wherein the one or more cameras include a camera mounted to a tip of the distal end of the probe (ref. 24, Fig. 5) but is silent regarding a camera mounted to a side of the distal end of the probe.
Regarding claim 17, Tingvatn discloses the method of claim 13, wherein mounting the one or more cameras includes mounting a first camera to a tip of the distal end of the probe (ref. 24), but is silent regarding the step of mounting a second camera to a side of the distal end of the probe.
Levy teaches a removable tip endoscope and probe (Abstract) comprising a distal tip having one or more cameras (paragraph [0051], Fig. 3, ref. 304) and one or more cameras on a side end (paragraph [0056], Fig. 3, ref. 338). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the distal end of the probe to include the one or more cameras on a side, as taught by Levy, for the purpose of broadening the field of the view of the probe (paragraph [0007]).
Regarding claim 7, Tingvatn discloses the device of claim 1, wherein the one or more cameras include a camera mounted to a tip of the distal end of the probe (ref. 24, Fig. 5), but is silent regarding six cameras mounted to sides of the distal end of the probe.
Levy teaches a removable tip endoscope and probe (Abstract) comprising a distal tip having one or more cameras (paragraph [0051], Fig. 3, ref. 304) and one or more cameras on a side end (paragraph [0056], Fig. 3, ref. 338). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the distal end of the probe to include the one or more cameras on a side, as taught by Levy, for the purpose of broadening the field of the view of the probe (paragraph [0007]).
Tinvatn as modified by Levy discloses one or more side cameras and further states that there may be additional cameras (Levy, paragraph [0057]), but is silent regarding the number six. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the number of side cameras to be six, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tingvatn (US 2020/0129047 A1) in view of BAR-OR et al. (US 2020/0107714 A1).
Regarding claim 12, Tingvatn discloses the device of claim 11, except wherein the controller rotates the distal end of the probe to control the position of the one or more cameras.
BAR-OR teaches an analogous speculum device with a probe (Abstract), wherein the probe comprises a camera (paragraph [0059], ref. 1335) and controller (ref. 1320) to rotate the camera (paragraph [0059]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the controller of Tingvatn such that the controller may rotate the distal end of the probe and camera, for the purpose of rotating, tilting or panning the camera to gain better control of the field of view.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TESSA M MATTHEWS whose telephone number is (571)272-8817. The examiner can normally be reached M - F 8am - 1pm.
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, Eduardo Robert can be reached at (571) 272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TESSA M MATTHEWS/Examiner, Art Unit 3773