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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claim 1, drawn to an endoscope control apparatus configured to obtain data from a database, get voice signals from an endoscope user, and issue control commands from multiple sources to the endoscope simultaneously, classified in A61B1/0004.
II. Claims 2-12, drawn to an endoscope control system configured to get voice signals from an endoscope user and issue control commands from multiple sources to the endoscope simultaneously, classified in A61B1/00006.
III. Claims 13-21, drawn to an endoscope control system configured to obtain data from a database, get voice signals from an endoscope user, and issue control commands from the voice signals, classified in G10L15/00.
The inventions are distinct, each from the other because of the following reasons:
Invention I is a linking invention. Invention I will be examined along with whichever of Inventions II and III are elected.
Inventions II and III are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because invention II does not require the processor be configured to obtain data from a database. The subcombination has separate utility such as an endoscope control system not required to issue concurrent commands from both voice and other sources, classified in G10L15/00.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because at least the following reason(s) apply:
(a) the inventions require a different field of search due to their mutually exclusive characteristics (for example, searching different classes/subclasses or electronic resources, or employing different search queries) and the prior art applicable to one species would not likely be applicable to another invention.
(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 an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve 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 restriction 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 upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions 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 inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Mark Beloborodov on 26 August, 2026 a provisional election was made without traverse to prosecute Inventions I-II, claims 1-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-21 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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
Claims 1-2 are objected to because of the following informalities:
In regards to claims 1-2, the claims do not provide indentation where new items are provided. Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i). See MPEP 6.08.01 (m). In particular, multiple distinct “steps” the processor is configured to perform occur under one heading.
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 1-12 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 claims 1-2, the claims read “to accept signals of voice utterances from a surgeon using an endoscope” [claim 1, lines 10-11, claim 2, lines 5-6]. This could be interpreted to mean the voice utterances come from a surgeon who is using an endoscope. This could also be interpreted to mean that the voice utterances are obtained by means of an endoscope. Therefore, the claims are unclear.
For the purposes of prosecution, and with reference to the applicant’s original disclosure, the latter interpretation is held to be correct.
In regards to claims 1-2, the claims read “the voice utterances” [claim 1, line 22, claim 2, line 14]. It is unclear if this is the same as the “voice utterances from a surgeon”, in which case “to accept the voice utterances” is a new step, or if this is the same as “signals of voice utterances from a surgeon”, in which case “to accept voice utterances” is a further definition of the previous step “to accept signals of voice utterances from a surgeon”. Therefore, the claims are unclear. For the purposes of prosecution it will be assumed the latter is the case.
In regards to claims 1-2, the claims read “the control commands” [claim 1, line 23, claim 2, line 15]. It is unclear which of the antecedent “control commands” this refers to, or if it refers to both antecedent instances of “control commands” in each claim. Therefore, the claim is unclear. For the purposes of prosecution, it will be assumed these refer to both antecedent instances of “control commands” in each claim.
Allowable Subject Matter
Claims 1-12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, 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 control apparatus comprising:
a processor and a memory, the processor configured to:
accept voice signals from a surgeon, using an endoscope,
decode the voice signals into first commands to control the endoscope,
issue the first commands to components of the endoscope to implement the decoded voice signals
accept control signals from another input device,
decode the control signals from the other input device into second commands to control the endoscope,
issue the second commands to components of the endoscope to implement the control signals from the other input device,
wherein the accepting and decoding steps for voice signals and signals from another device occur concurrently, and
wherein the first and second commands are issued simultaneously.
Takabashi et al. (US 5,902,230) discloses an endoscope image processor that receives voice commands.
Coombs et al. (US 2014/0268541) discloses an endoscope controller that receives voice commands.
DiMaio et al. (US 2018/0042680) discloses the above except for wherein the first and second commands are issued simultaneously.
There is no reason or suggestion provided in the prior art to modify the above prior art to teach the limitations 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.
Takabashi et al. (US 5,902,230)
Coombs et al. (US 2014/0268541)
DiMaio et al. (US 2018/0042680)
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.
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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/AARON B FAIRCHILD/Primary Examiner, Art Unit 3795
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