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 .
Disposition of Claims
Claim 1 is pending and rejected.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Coon et al. (hereinafter "Coon") (US 2019/0216307).
Regarding Claim 1, Coon discloses a cordless endoscope assembly (Fig. 21, 1100; [0214]), comprising:
a housing (Figs. 21, 27 & 45, an otoscope assembly comprising 1104, 1120 and 1706; [0214] & [0236]) that defines an ergonomic handpiece (Figs. 44 & 45, 1706 of the otoscope assembly; [0236]) sized to be held between a palm and one or more fingers of a user's hand ([0170);
an endoscope tube (Fig. 25a, 1160; [0216]) that extends distally of the housing (see Fig. 25a);
an eyepiece (Fig. 25a, 1128; [0214]) that extends proximally of the housing (see Fig. 25a); and
electronics (Figs. 33 & 45, electronics comprising 1274 and 1714; [0226] & [0236]) housed in the housing (Figs. 33 & 45, 1274 and 1714 are housed in 1120 of the otoscope assembly and 1706 of the otoscope assembly, respectively; [0226] & [0236]) and configured to operate one or more light sources in the endoscope (Fig. 33, 1270; [0236]), the electronics comprising one or more batteries (Fig. 45, 1714; [0236]) and a printed circuit board (Fig. 33, 1274; [0226]),
wherein the housing includes a connector (Fig. 25a, 1170; [0216]) configured to removably couple with a cannula connector of a cannula (Fig. 21, 1124; [0216]) when the endoscope tube is inserted through the cannula ([0216]).
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-19 of U.S. Patent No. 11,737,648.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claim of the current application limits a broader version of ‘648 and thus is anticipated by ‘648.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. 12,239,286 in view of Coon et al. (hereinafter "Coon") (US 2019/0216307).
The claims of ‘286 disclose all of the limitations of the instant claim except for an eyepiece that extends proximally of the housing.
Regarding Claim 1, Coon discloses a cordless endoscope assembly (Fig. 21, 1100; [0214]), comprising:
a housing (Figs. 21, 27 & 45, an otoscope assembly comprising 1104, 1120 and 1706; [0214] & [0236]) that defines an ergonomic handpiece (Figs. 44 & 45, 1706 of the otoscope assembly; [0236]) sized to be held between a palm and one or more fingers of a user's hand ([0170);
an endoscope tube (Fig. 25a, 1160; [0216]) that extends distally of the housing (see Fig. 25a);
an eyepiece (Fig. 25a, 1128; [0214]) that extends proximally of the housing (see Fig. 25a); and
electronics (Figs. 33 & 45, electronics comprising 1274 and 1714; [0226] & [0236]) housed in the housing (Figs. 33 & 45, 1274 and 1714 are housed in 1120 of the otoscope assembly and 1706 of the otoscope assembly, respectively; [0226] & [0236]) and configured to operate one or more light sources in the endoscope (Fig. 33, 1270; [0236]), the electronics comprising one or more batteries (Fig. 45, 1714; [0236]) and a printed circuit board (Fig. 33, 1274; [0226]),
wherein the housing includes a connector (Fig. 25a, 1170; [0216]) configured to removably couple with a cannula connector of a cannula (Fig. 21, 1124; [0216]) when the endoscope tube is inserted through the cannula ([0216]).
The advantage of the eyepiece window is to provide magnification for enhanced viewing (Coon; [0183]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the cordless housing as disclosed by '286, to include the eyepiece window as taught by Coon, to provide magnification for enhanced viewing (Coon; [0183]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kim et al. (US 2020/0094030) teaches a multimodal endoscope having a handle with a visualization component.
Zhao et al. (US 2019/0142256) teaches a portable endoscopic inspection system.
Demers et al. (US 2014/0336465) teaches an endoscope with a coherent fiber bundle.
Garcia et al. (US 2010/0191053) teaches a portable endoscope with interchangeable flexible insertion shafts.
Melder (US 2010/0145146) teaches an endoscopic digital recording system with removable screen.
Root et al. (US 2009/0076328) teaches an endoscope with an internal light source and power supply.
Schwartz et al. (US 2008/0200761) teaches an endotracheal intubation device.
Sundet et al. (US 2006/0100483) teaches an integrated viewing assembly for an endoscope.
Cane et al. (U.S. 5,762,605) teaches an ergonomic hand-held optical diagnostic instrument.
Lee et al. (U.S. 5,645,519) teaches an endoscopic instrument with a blade assembly.
Yoon (U.S. 5,632,717) teaches a penetrating endoscope.
Parent et al. (U.S. 4,258,721) teaches a self-contained portable hysteroscope.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN FLOYD LONDON whose telephone number is (571)272-4478. The examiner can normally be reached Monday - Friday: 10:00 am ET - 6:00pm ET.
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, 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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/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795
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