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
Claims 1-15 are pending and rejected.
Information Disclosure Statement
The information disclosure statement filed October 15, 2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, there is no legible copy as originally published of the foreign patent document DE-10157075-A1.
Claim Objections
Claims 1-13 & 15 are objected to because of the following informalities:
Regarding Claims 1-2, 4, 7, 9, 11, 12-13 & 15, Claims 1-2, 4, 7, 9, 11, 12-13 & 15 recite the limitation “can” on Line 20 of Claim 1, Line 4 of Claim 2, Line 4 & Line 5 of Claim 4, Line 5 of Claim 7, Line 7 of Claim 9, Line 5 of Claim 11, Line 4 of Claim 12, Line 5 of Claim 13 and Line 4 of Claim 15. Examiner kindly amends these limitations to read “configured to” to better conform to U.S. patent practice and avoid ambiguity whether these limitations are considered optional.
Regarding Claims 1 & 12-13, Claim 1 recites the limitation “at least a first housing part” on Line 3. Further recitations of this limitation on Line 8 & on Line 13 of Claim 1, on Line 2 of Claim 12 and on Line 2 of Claim 13, recite “the first housing part”. Examiner kindly requests Applicant amend these limitations to read “the at least first housing part” to provide consistent claim language throughout.
Regarding Claims 1 & 11, Claim 1 recites the limitation “at least a first rotating plate bearing” on Line 5. Further recitations of this limitation on Line 7 of Claim 1, and on Line 2 of Claim 11 recite “the first rotating plate bearing”. Examiner kindly requests Applicant amend these limitations to read “the at least first rotating plate bearing” to provide consistent claim language throughout.
Regarding Claim 3, Claim 3 recites the limitation “at least a second rotating plate bearing” on Line 3. A further recitation of this limitation on Line 5 of Claim 3 recites “the second rotating plate bearing”. Examiner kindly requests Applicant amend this limitation to read “the at least second rotating plate bearing” to provide consistent claim language throughout.
Regarding Claims 4-5, 7-8 & 10, Claim 1 recites the limitation “at least a first guide plane” on Line 17. Further recitations of this limitation on Line 5 of Claim 4, on Line 2 of Claim 5, on Line 2 of Claim 7, on Line 3 of Claim 8 and on Line 2 of Claim 10 recite “the first guide plane”. Examiner kindly requests Applicant amend these limitations to read “the at least first guide plane” to provide consistent claim language throughout.
Regarding Claim 15, Claim 15 recites the limitation “at least one filter changing apparatus” on Lines 2-3. A further recitation of this limitation on Line 3 recites “the filter changing apparatus”. Examiner kindly requests Applicant amend this limitation to read “the at least one filter changing apparatus” to provide consistent claim language throughout.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
"at least one counter-magnetic element...rotat[ing]... the rotating plate" in Claim 13.
“an assigned magnetic device” causing rotation of the rotating plate in Claim 13.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitations recite sufficient structure, materials, or acts to entirely perform the recited function.
Such claim limitations are:
"by means of a rotation axle" in Claim 1.
“by means of an assigned magnetic device”
Because these claim limitations are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitations do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112(a)
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.
Claim 13 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 13, Claim 13 recites “at least one counter-magnetic element” on Line 4 which invokes 35 U.S.C § 112(f) means plus function interpretation as discussed above. While the “at least one counter-magnetic element” as claimed is recited in Para. [75], Applicant’s specification provides no adequate structure to perform the claimed function of internally rotating the rotating plate. Therefore, the examiner concludes that the Applicant’s disclosure does not provide sufficient written description to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor, at the time the application was filed, had possession of the claimed invention.
Regarding Claim 13, Claim 13 recites “an assigned magnetic device” on Line 5 which invokes 35 U.S.C § 112(f) means plus function interpretation as discussed above. While the “assigned magnetic device” as claimed is recited in Para. [75], Applicant’s specification provides no adequate structure to perform the claimed function of externally rotating the rotating plate. Therefore, the examiner concludes that the Applicant’s disclosure does not provide sufficient written description to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor, at the time the application was filed, had possession of the claimed invention.
Claim Rejections - 35 USC § 112(b)
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 1-15 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.
Regarding Claims 1-4 & 7-13, Claims 1-4 & 7-13 are replete with antecedent basis issues, whether antecedents is lacking, uncertain and/or ambiguous (see MPEP § 2173.05(e)). Substantial amendments to the claims are required to comply with this statute. For the purpose of examination, relevant art has been applied but appropriate correction is required.
Regarding Claim 3, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired (see MPEP § 2173.05(c)). In the present instance, Claim 4 recites the broad recitation “at least one further pivotable filter holder” on Lines 3-4, and the claim also recites "in particular two further pivotable filter holders" on Lines 4-5 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of examination, the narrower language is considered optional and thus not required.
Regarding Claim 6, Claim 6 recites the limitation “the filter holders have the same length and/or a different length [emphasis added]” on Lines 2-3. It is unclear how the filter holders can be both the same lengths and different lengths. For the purpose of examination, “the filter holders have the same length and/or a different length” is being interpreted as “the filter holders have the same length or a different length”.
Regarding Claim 7, the term “precisely” is a relative term which renders the claim indefinite. The term “precisely” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, any associated filter holder pivoted into the optical passage is considered to be pivoted precisely.
Regarding Claim 12, the term “freely” is a relative term which renders the claim indefinite. The term “freely” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, any rotating plate that is contacted over its entire circumference from outside is considered to be contacted freely.
Regarding Claim 13, claim limitations “at least one counter-magnetic element” and “assigned magnetic device” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structures, materials, or acts for performing the entire claimed functions and to clearly link the structures, materials, or acts to the functions. The disclosure does not provide adequate structure to perform the claimed functions of internally rotating the rotating plate and externally rotating the rotating plate, respectively. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding Claims 5 & 14-15, Claims 5 & 14-15 are rejected as being dependent upon claims previously rejected under 35 U.S.C. § 112(b).
Allowable Subject Matter
Claims 1-12 & 14-15 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action.
Claim 13 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Muryoi (U.S. 3,868,714) discloses a filter changing apparatus (Fig. 1, a filter change-over device; Col. 2, Lines 6-8), wherein the filter changing apparatus comprises:
at least a first housing part (Fig. 1, an inner wall of 30; Col. 2, Lines 22-24),
a rotating plate (Fig. 1, 8; Col. 2, Lines 37-38) with two opposing plate surfaces (a lever-facing side and a cam-facing side; see Fig. 1),
at least a first rotating plate bearing (Fig. 1, 6; Col. 2, Lines 32-33), and
at least two pivotable filter holders (Fig. 1, 4a, 4b and 4c; Col. 2, Lines 20-21), each with a filter receptacle (see Fig. 1), for an optical filter (Fig. 1, 2a, 2b and 2c, respectively; Col. 2, Lines 18-20),
wherein the first rotating plate bearing is arranged between the first housing part and a first plate surface of the rotating plate (see Fig. 1),
the rotating plate is rotatable relative to the at least first housing part (Col. 2, Lines 37-40), and
the at least first housing part, the at least first rotating plate bearing, and the rotating plate each have an optical passage along an optical axis (see Fig. 1),
wherein the at least two pivotable filter holders are each arranged on the first housing part so as to be rotatable by means of a rotation axle (Fig. 1, 3a, 3b and 3c, respectively; Col. 2, Lines 21-23), and each have a guide element oriented toward the rotating plate (Fig. 1, 5a, 5b and 5c, respectively; Col. 2, Lines 29-31),
wherein the at least first rotating plate bearing has a recess (Fig. 1, 7’; Col. 2, Lines 34-35) for the passage of one guide element each (Col. 2, Lines 35-37), and
the rotating plate has a first guide plane (Fig. 1, 8a, 8b and 8c; Col. 2, Lines 41-43).
The intended use language “for an endoscope camera” does not positively recite any structural limitations so as to carry out the function, accordingly the prior art Muryoi can carry out the function, i.e. the intended use recited absent any specific structure recited to do so.
Muryoi fails to explicitly disclose wherein the at least first rotating plate bearing has two recesses for the passage of one guide element each; and wherein the rotating plate has, on its first plate surface, the at least a first guide plane with a shaped, circumferential contact surface on a circumference so that, when the rotating plate is rotated, a pressure force of the shaped, circumferential contact surface on at least one of the two guide elements can pivot the associated filter holder into or out of the optical passage or position it in an initial position free from the optical passage.
Additionally, no prior art of record, alone or in combination, discloses, teaches or suggests the missing features, recited above, of the filter changing apparatus of the instant application.
Regarding the extended European search report of EP 25170818 (hereinafter “ESR”), mailed August 19, 2025, the ESR cites EP 3203296 A1 to Baader as anticipating, inter alia, Claim 1 of this instant application, Examiner respectfully disagrees. Baader discloses a filter changing apparatus having a housing part, a rotating plate with two plate surface and a plurality of pivotable filter holders having corresponding guide elements, Baader fails to disclose, teach or suggest, inter alia, at least a first rotating plate bearing, arranged between the housing part and a first plate surface of the rotating plate, and having an optical axis and two recesses for passage of the corresponding guide elements of the plurality of pivotable filter holders, and the first plate surface having a first guide plane with a shaped, circumferential contact surface circumferentially disposed thereon. As such, Baader does not anticipate the claimed invention nor would it render the claims obvious in combination with Muryoi.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2023/0025519; US 2021/0215920; US 2017/0360276; US 2017/0219816; US 2014/0104713; US 2011/0194197; US 2009/0051764; US 2005/0004435; U.S. 4,043,646; U.S. 3,661,458; U.S. 2,687,669 and U.S. 2,684,611.
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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