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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 04/11/2025 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-20 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1 of U.S. Patent No. 12295547 in view of Bedingham (US 20130211265) (hereinafter Bedingham).
Regarding claim 1,
Instant Application
U.S. Patent No. 12295547 Claim 1
A portable medical device, comprising:
A portable medical device, comprising:
a main body extending from a first end to a second end;
a main body extending from a first end to a second end;
a first camera disposed at the first end, the first camera configured to facilitate examination of an ear of a patient; and
a first camera disposed at the first end, the first camera comprising an otoscopic lens and configured to facilitate examination of an ear of a patient, the otoscopic lens having a fixed magnification; and
a second camera disposed at the second end, the second camera configured to facilitate examination of a throat of the patient.
a second camera disposed at the second end, the second camera comprising a video scope configured for adjustable magnification of an object, the second camera configured to facilitate examination of a throat of the patient.
Although claim 1 of U.S. Patent No. 12295547 does not specify a broader description of a first and second camera, Bedingham paragraphs 2, 5, and 27 and figure 1a teaches a handheld medical device with a camera disposed at an end to perform a medical examination that may be gripped and used, and also is described as having a camera coupled to it, indicating a manufacturing process. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the invention disclosed by claim 1 of U.S. Patent No. 12295547 with the handheld medical device with a camera disposed at an end to perform a medical examination that may be gripped and used, and also is described as having a camera coupled to it, indicating a manufacturing process of Bedingham so that the device of U.S. Patent No. 12295547 may include a process of examining, more broadly, an ear and throat with a first and second camera by a device, method, and method of manufacturing a medical device.
Claim(s) 2-7 is/are rejected for their dependence on claim(s) 1.
Regarding claim 8,
Instant Application
U.S. Patent No. 12295547 Claim 1
A method of using a portable medical device, the method comprising:
A portable medical device, comprising:
gripping a main body that extends from a first end to a second end;
a main body extending from a first end to a second end;
using a first camera disposed at the first end to facilitate examination of an ear of a first patient; and
a first camera disposed at the first end, the first camera comprising an otoscopic lens and configured to facilitate examination of an ear of a patient, the otoscopic lens having a fixed magnification; and
using a second camera disposed at the second end to facilitate examination of a throat of a second patient.
a second camera disposed at the second end, the second camera comprising a video scope configured for adjustable magnification of an object, the second camera configured to facilitate examination of a throat of the patient.
Although claim 1 of U.S. Patent No. 12295547 does not specify a broader description of a first and second camera, and method of using a portable medical device, Bedingham paragraphs 2, 5, and 27 and figure 1a teaches a handheld medical device with a camera disposed at an end to perform a medical examination that may be gripped and used, and also is described as having a camera coupled to it, indicating a manufacturing process. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the invention disclosed by claim 1 of U.S. Patent No. 12295547 with the handheld medical device with a camera disposed at an end to perform a medical examination that may be gripped and used, and also is described as having a camera coupled to it, indicating a manufacturing process of Bedingham so that the device of U.S. Patent No. 12295547 may include a process of examining, more broadly, an ear and throat with a first and second camera by a device, method, and method of manufacturing a medical device.
Claim(s) 9-14 is/are rejected for their dependence on claim(s) 8.
Regarding claim 15,
Instant Application
U.S. Patent No. 12295547 Claim 1
A method of manufacturing a portable medical device, the method comprising:
A portable medical device, comprising:
coupling a first camera to a first end of a main body, wherein the first camera is configured to facilitate examination of an ear of a patient; and
a first camera disposed at the first end, the first camera comprising an otoscopic lens and configured to facilitate examination of an ear of a patient, the otoscopic lens having a fixed magnification; and
coupling a second camera to a second end of the main body, wherein the second camera is configured to facilitate examination of a throat of the patient.
a second camera disposed at the second end, the second camera comprising a video scope configured for adjustable magnification of an object, the second camera configured to facilitate examination of a throat of the patient.
Although claim 1 of U.S. Patent No. 12295547 does not specify a broader description of a first and second camera, and method of manufacturing a portable medical device, Bedingham paragraphs 2, 5, and 27 and figure 1a teaches a handheld medical device with a camera disposed at an end to perform a medical examination that may be gripped and used, and also is described as having a camera coupled to it, indicating a manufacturing process. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the invention disclosed by claim 1 of U.S. Patent No. 12295547 with the handheld medical device with a camera disposed at an end to perform a medical examination that may be gripped and used, and also is described as having a camera coupled to it, indicating a manufacturing process of Bedingham so that the device of U.S. Patent No. 12295547 may include a process of examining, more broadly, an ear and throat with a first and second camera by a device, method, and method of manufacturing a medical device.
Claim(s) 16-20 is/are rejected for their dependence on claim(s) 15.
Allowable Subject Matter
Claim(s) 1-20 is/are rejected under non-statutory double patenting rejections as detailed above, but would be allowable if those rejections were overcome, due to containing subject matter allowable for similar reasons as noted in parent application 18/117340 (US 12295547).
The following is a statement of reasons for the indication of allowable subject matter: Claim 1 contains the limitations regarding a portable medical device comprising a main body extending from a first end to a second end, a first camera disposed at the first end, the first camera facilitating examination of an ear of a patient, and a second camera disposed at the second end, the second camera facilitating examination of a throat of the patient. At the time of the effective filing date of the application, these limitations had not been fully anticipated and it would not have been obvious to one of ordinary skill in the art to combine elements of the prior art to meet this limitation. Independent claim(s) 8 and 15 contain(s) allowable subject matter for the same reasons as claim 1. The claim(s) depending on these claim(s) contain allowable subject matter for the reasons concerning these claim(s).
The closest prior art, Bedingham (US 20130211265), Walter et al. (US 20100012417), Yang (US 20200409549), Chang (US 20100305409), Pesach et al. (US 20230099863), Bruno (US 20220170795), Gerber (US 5638302), de Smet (US 20130057828), Levy et al. (US 20210113056), Shelton IV et al. (US 20220331047), Levy et al. (US 20210298566), Mersinger (US 20230248239), Kashima et al. (US 10799088), Merigan (US 20240000397), Killmann et al. (US 20050043583) either singularly or in combination fail to anticipate or render obvious the above described limitations. Applicant’s 11/13/2024 remarks in application 18/117340, pages 6-8 cite, “ The Examiner asserts that "it would have been obvious... to modify the teachings of Bedingham to include the teaching of Walter so that in combination with Bedingham, the first and second cameras may be incorporated into the main body of Bedingham in order to provide for dual user and location imaging. One would be motivated to combine these teachings in order to provide for imaging of both a user and the surrounding environment simultaneously- an advantage for both breath monitoring and medical imaging" (emphasis added). Such a modification and rationale would not result in the claimed invention, as amended herein. More specifically, a "first camera comprising an otoscopic lens and configured to facilitate examination of an ear of a patient' and a "second camera configured to facilitate examination of a throat and/or nose of the patient" could not "provide for dual user and location imaging" as asserted by the Examiner, nor could it "provide for imaging of both a user and the surrounding environment simultaneously" as asserted by the Examiner. Accordingly, Applicant asserts that modifying Walter with Bedingham based on this motivation would not result in the claimed invention. Accordingly, claim 1 as amended is non-obvious in view of Bedingham and Walter, and therefore, the rejection should be withdrawn.
Furthermore, as amended, the first camera has optical features that enable the user of the device to conduct an ear exam, and the second camera has optical features to enable the user of the device to conduct a throat or nose exam. Bedingham, viewed in light of Walter, does not suggest a device with two cameras to enable two different types of medical exams, which would be conducted separately and independently. Bedingham recites a medical device with a single camera. Walter discloses "breath alcohol ignition interlock device,"not a medical device. This breath alcohol ignition interlock device of Walter comprises a first camera to confirm the identity of the user taking a breathalyzer exam, and a second camera that is configured to capture the surroundings of the user of the device. Stated another way, the cameras are configured for use together based on a specific application of the device, a breathalyzer exam. The configuration of the second camera in Walter requires the second camera to capture a wide angle of the surroundings to verify that the user is in the driver's seat when operating the device. In contrast, the cameras in claim 1 are elements of a "portable medical device" (emphasis added) and are both structurally and optically configured to capture images of small, close-up spaces (the ear or the throat) "of a patient" as claimed.
Moreover, the second camera in Walter is disclosed in combination with a breath- analyzing device and first camera for the purpose of ensuring the user is who they say they are and located in the driver's seat of the vehicle. The purpose of the second camera disclosed in Walter is to prevent tampering of results by ensuring it is the driver taking the breath test, not a third party attempting to trick the device into allowing operation of the vehicle. (Walter, Background of the Invention). The device disclosed herein, on the other hand, is a "portable medical device" that allows health data to be measured and transmitted for telemedicine purposes. During a telehealth appointment, there is no reason to monitor the surroundings of a patient. In fact, such monitoring of a patient's home and surroundings could violate the patient's privacy. Thus, one of ordinary skill in the art would have no reason to contemplate combining Bedingham and Walter to disclose a medical device with two cameras, where a "first camera comprising an otoscopic lens and configured to facilitate examination of an ear of a patient' and a "second camera configured to facilitate examination of a throat and/or nose of the patient" as claimed.” Examiner recounts that in the prior art search, medical camera devices was found with a single camera that was able to examine either an ear or a throat, as in the case of Bedingham. However, the prior art did not produce a portable medical device with two opposite ended cameras configured to image and ear and throat on the same device. Examiner, in the previous case 18/117340, presented other devices in other fields that had opposite ended cameras, such as Walter. However, Examiner agrees with applicant’s assertion that Walter, and therefore, other prior art references with two opposite cameras that are not in the medical field, teach away from the amended claim limitations about one camera being configured for an ear and the other camera being a throat camera. Examiner acknowledges that one of ordinary skill in the art would understand that a camera configured to examine either an ear or throat cannot be any generic camera from another field, such as in the case of Walter. Examiner therefore notes that attempts to examine an ear or throat with the cameras of Walter would be inappropriate, and seeing as the medical field prior art was unable to produce teachings of an opposite disposed ear and throat camera, at the time of the effective filing date of the application, these limitations had not been fully anticipated and it would not have been obvious to one of ordinary skill in the art to combine elements of the prior art to meet this limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew D Kim whose telephone number is (571)272-3527. The examiner can normally be reached Monday - Friday: 9:30am - 5:30pm EST.
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/MATTHEW DAVID KIM/Primary Examiner, Art Unit 2483
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