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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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, 10, 11, and 13 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The phrase “rotate the image” in the final limitation of each claim renders each indefinite due to it being unclear as to what is being rotated. The claim language prior to this phrase lists an image acquired by an endoscope that is then displayed on a display, but it is unclear whether “rotate the image” means to rotate the digital orientation of the image, to rotate the physical display as it displays the image, or to rotate the endoscope itself. The examiner requests amendment of this claim in order to more definitively explain what is being rotated so that someone skilled in the art may make/use the invention.
The phrase “particular relative angle” in the final limitation of each claim renders each indefinite due to it being unclear as to what this angle is relative to. It is understood that the angle is between a direction of a second vector and an up-down direction of the image displayed on the display, but the claim does not describe how someone skilled in the art could determine the “particular relative angle” as the reference angle it is relative to is not stated.
The final limitation of each claim, beginning “rotate the image on a basis…” and ending “up-down direction of the image displayed on the display” fails to provide basis for enablement for the following reasons. The rotation of the image is claimed to be based upon creating a specific angle between a second vector and an up-down direction of an image displayed upon a display, but the creation of the second vector in the first place depends upon projecting a first vector that cannot reasonably be created based on the claim language. The first vector is described as “indicating an up-down direction of the focus target as viewed from the operator” but a vector requires two points to be created, and the only point given is the focus target itself. Without two points to create a first vector, a second vector that is a projection of a first vector cannot reasonably be determined, making this limitation in its entirety fail to comply with the enablement requirement under 35 U.S.C. 112(a). A person skilled in the art could not reasonably be expected to make/use the invention based on the language of the rejected claims, and the examiner requests amendment of said claims in order to resolve these issues.
Claims 1, 10, 11, and 13 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The phrase “up-down direction of the image displayed on the display” at the end of each claim also renders each indefinite due to it being unclear if the up-down direction is in reference to the image itself or if it refers to the physical up down directed of the display upon which the image is displayed. The examiner requests amendment of this claim in order to more definitively explain the up-down direction is in reference to.
Allowable Subject Matter
Claims 1, 11, 12, and 13 would be deemed allowable if not for the 35 U.S.C. 112(a) and 112(b) rejections set forth earlier in this document. The following limitation of each claim “rotate the image on a basis of the acquired first, second, and third positions such that a particular relative angle is formed between a direction of a second vector, which is a projection of a first vector indicating an up-down direction of the focus target as viewed from the operator onto a plane orthogonal to a visual axis of the endoscope and an up-down direction of the image displayed on the display” is deemed allowable. The closest prior art of reference can be found in Darisse et al (U.S. Patent Application Publication 2018/0228557, hereinafter “Darisse”). Darisse teaches an endoscope system containing two treatment tools and an imaging device and teaches rotating the image acquired by said imaging device but fails to teach where the rotation is based off of vector positions between the treatment tool ports and the focus target within the examination subject as well as an up-down direction of the image displayed. As claims 2-10 depend upon a claim that would be allowable should the 35 U.S.C. 112(a) and (b) rejections be overcome, they would also be deemed allowable in the case that the mentioned rejections are overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAYTON BARKER whose telephone number is (571)272-0912. The examiner can normally be reached between 9:00 and 5:00 PM EST Monday-Friday.
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/DAYTON HYUN JIN BARKER/Patent Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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