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
Applicant’s election without traverse of Invention II (claims 10-20) and Species A (Figs.1-4) in the response of 31 August, 2026 is acknowledged. The restriction requirement is hereby made final. Claims 1-9 are withdrawn, and claims 10-20 are examined.
Claim Objections
Claims 10 and 18 are objected to because of the following informalities:
Claim 10 should be indented at line 9 of the claim.
Claim 18 reads “lateral” [line 1] where it is clear it was instead intended to read “laterally”.
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.
Claims 10-20 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 10, the claim reads ”the electrically conductive coating” [lines 9-10]. 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 the “plurality of discrete electrically conductive surfaces”.
In regards to claim 17, the claim reads “the working channel extension extends from the distal end of the working channel of the endoscope” [lines 2-3], whereas claim 10 from which it depends reads “A device for use with an endoscope having an optical lens and a working channel” [lines 1-2]. It is unclear if the endoscope and its parts are being positively set forth in claim 17. Therefore, the claim is unclear. For the purposes of prosecution, it will be assumed the endoscope and its parts are not positively set forth in claim 17.
In regards to claim 17, the claim reads “the distal end of the working channel” [line 3]. here 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 distal end is a newly recited item.
Claim Rejections - 35 USC § 102
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.
Claims 10-16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Knight et al. (US 2006/0030844).
In regards to claim 10, Knight discloses a device for use with an endoscope having an optical lens and a working channel, the device comprising:
an optical coupler [9, Figs.2, 6, para.33, 80] having a distal end, a proximal end, a visualization section [distal portion of 9, Figs.2, 6] at the distal end, and an attachment section [proximal end of 9 attaching to the endoscope, Figs.2, 6, para.80] at the proximal end for removable attachment to the endoscope [as all devices may be disassembled], wherein the visualization section comprises an outer surface outer surfaces of 9 covering the optical lens, beneath the conductive material, para.20, 34, 75, 80] configured to cover at least a portion of the optical lens of the endoscope;
a plurality of discrete electrically conductive surfaces [para.20, 34, 75, 80] disposed on the outer surface of the visualization section; and
at least one connector [15, Fig.6, para.80] capable of providing energy to the electrically conductive coating.
In regards to claim 11, Knight discloses the device of claim 10, wherein the electrically conductive surfaces are spaced from each other [para.34].
In regards to claim 12, Knight discloses the device of claim 10, wherein the electrically conductive surfaces each comprise a curved surface [Fig.2, as these are laid on a curved surface].
In regards to claim 13, Knight discloses the device of claim 10, wherein the electrically conductive surfaces each comprise a semicircle [at a small enough scale, a semicircle would be contained in any given pattern].
In regards to claim 14, Knight discloses the device of claim 10, wherein the electrically conductive surfaces are disposed outside of a field of view of the optical lens of the endoscope [given the appropriate endoscope optical lens].
In regards to claim 15, Knight discloses the device of claim 10, wherein the electrically conductive surfaces are disposed with a field of view of the optical lens of the endoscope [given the appropriate endoscope optical lens].
In regards to claim 16, Knight discloses the device of claim 10, wherein the conductive surfaces comprise a first conductive surface and a second conductive surface, wherein the device further comprises a positive terminal coupled to the first conductive surface and a negative terminal coupled to the second conductive surface [para.34, relative to one another].
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 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Knight et al. (US 2006/0030844) in view of Zwolinski et al. (US PGPUB 2007/0260117).
In regards to claim 17, Knight discloses the device of claim 10, however does not positively disclose a working channel extension within the optical coupler for receiving an instrument, fluid or gas, wherein the working channel extension extends from the distal end of the working channel of the endoscope through the visualization section to an opening on the outer surface of the visualization section.
Zwolinski discloses an analogous device for use with an endoscope, comprising:
an optical coupler [40b, 82, Figs.2c, 4a-b, para.30-31, 49, 51-52; paragraph 51 discusses how the tip 82 of Figs.4a-b is a variant of tip 40b of Fig.2c] having a visualization section [distal portion of 40b, 82 in field of view of the endoscope, Figs.2c, 4a-b] at a distal end, and
an attachment section [proximal end of 40b, 82 attaching to the endoscope, Figs.2c, 4a-b] at a proximal end for attachment to the endoscope, wherein an outer surface of the visualization section is configured to cover at least a portion of the optical lens of the endoscope [Figs.2, 4] and being capable of transmitting an optical image through the optical coupler [para.14, 49, 51];
an electrically conductive material [84a-b, Figs.4a-b, para.52] disposed on the outer surface of the distal end of the optical coupler;
at least one connector [“cautery wire”, para.52] capable of providing energy to the electrically conductive material, and
a working channel extension [86, Figs.4a-b, para.52] within the optical coupler for receiving an instrument, fluid or gas, wherein the working channel extension extends through the visualization section to an opening on the outer surface of the visualization section.
Zwolinski teaches that the working channel is provided in the optical coupler for the purpose of receiving or passing an instrument therethrough [para.52].
Therefore, it would have been obvious to one having ordinary skill in the art to modify the optical coupler of Knight to have a working channel in accordance with the teachings of Zwolinski. This would be done for the purpose taught above, as well as the predictable result of allowing instruments passed through the endoscope to be passed through the optical coupler to the surgical site.
This would create a device where the working channel extension extends from the distal end of the working channel of the endoscope through the visualization section to the opening on the outer surface of the visualization section, as the working channel of the endoscope could be configured in this fashion.
In regards to claim 18, Knight in view of Zwolinski the device of claim 17, wherein the electrically conductive surfaces are laterally spaced from the opening on the outer surface of the visualization section [Zwolinski: Fig.4a].
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Knight et al. (US 2006/0030844).
In regards to claim 19, Knight discloses the device of claim 10, however does not positively disclose wherein the electrically conductive surfaces comprise a conductive oxide.
In an alternative embodiment, Knight teaches the electrically conductive surfaces comprise a conductive oxide [para.33]. Knight teaches that this is done for the purpose of making the electrically conductive surfaces transparent [para.33].
Therefore it would have been obvious to one having ordinary skill in the art to modify the electrically conductive surfaces disclosed by Knight to comprise a conductive oxide in accordance with the teaching of Knight. This would be done for the purpose taught above.
In regards to claim 20, Knight teaches the device of claim 19, wherein the conductive oxide is a titanium conductive oxide [para.33].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Titus (US 2020/0281448)
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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/AARON B FAIRCHILD/Primary Examiner, Art Unit 3795
