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 .
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.
Claims 1-6, 8, 11-16 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-7, 11-13, 15-16 and 20 of U.S. Patent No.12,303,107 B2 to Sekiguchi et al. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements in the application claims are covered by the patented claims. Except for a minor difference in terminology, it is clear that all elements of claims 1-6, 8, 11-16 and 18 are found in claims 1-3, 5-7, 11-13, 15-16 and 20 of the patent. The difference between the claims of the application and the claims of the patent is that the patent claims include more elements and is thus more specific. Thus, the invention of claims 1-3, 5-7, 11-13, 15-16 and 20 of the patent is in effect a “species” of the “generic” invention of claims 1-6, 8, 11-16 and 8 of the application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-6, 8, 11-16 and 8 are anticipated by claims 1-3, 5-7, 11-13, 15-16 and 20 of the patent, they are not patentably distinct from the patented claims.
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)(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.
Claim(s) 1-8, 10, 12-18 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hatano et al. (WO 2017/126157 A1).
Regarding claim 1, Hatano discloses an insertion device comprising: a bending portion (15; Fig. 2); an operation portion (18; Fig. 2) provided proximally relative to the bending portion (Fig. 2); an operation lever (20/21/23; Fig. 2) provided in the operation portion (18) and configured to bend the bending portion when the operation lever is tilted (page 3 – “An operation element 20 that can be tilted is provided on one surface 18 a of the operation unit main body 18. The operator 20 is a bending operation device, and for example, directly pulls a bending operation wire (not shown) to bend the bending portion 15”); and an elastic body (22a; Figs. 4A-4B) comprising: a first portion (24/25/26; Figs. 4A-4B) corresponding to a first tilting direction (up, down, left, right), the first portion having a first hardness; and a second portion (29; Figs. 4A-4B) corresponding to a second tilting direction (page 5 - “as shown in FIG. 4B, the first deformation limiting portion 29A is provided so as to be positioned between the upward tilting operation direction U and the right tilting operation direction R of the shaft portion 21, and the second deformation limiting portion 29B”), the second portion having a second hardness larger than the first hardness (page 5 - “the deformation limiting part 29 is a plate-like part, and its thickness is set so as to have a predetermined flexibility” and page 6 – “the deformation limiting portions 29A, 29B, 29C, and 29D shown in FIG. 4B, which are the deformation limiting portions 29, are formed thicker than the peripheral portion 24 and the central portion 25 as shown by the two-dot chain lines”).
Regarding claim 2, Hatano discloses the insertion device according to claim 1, wherein the operation lever (20/21/23; Fig. 2) includes a shaft (21; Figs. 2 and 4A), the elastic body (22A; Fig. 4A) comprising: a first end (25; Fig. 4A) connected to the shaft (21), and a second end (24/24a; Fig. 4A) connected to the operation portion (18).
Regarding claim 3, Hatano discloses the insertion device according to claim 1, wherein the first tilting direction is a direction in which the operation lever causes the bending portion to bend in any of up, down, left, and right directions (Fig. 4B; page 2 - “bending portion is configured to bend in, for example, two directions of up and down, or four directions of up and down, left and right. A bending operation device that is operated when the bending portion is bent is provided in the operation portion disposed on the proximal end side of the insertion portion”).
Regarding claim 4, Hatano discloses the insertion device according to claim 1, wherein a wall thickness of the first portion (24/25/26; Figs. 4A-4B) is smaller than a wall thickness of the second portion (29; page 6 – “the deformation limiting portions 29A, 29B, 29C, and 29D shown in FIG. 4B, which are the deformation limiting portions 29, are formed thicker than the peripheral portion 24 and the central portion 25 as shown by the two-dot chain lines”).
Regarding claim 5, Hatano discloses the insertion device according to claim 1, wherein the operation lever is a joystick lever (21; Fig. 4A), and the elastic body is a rubber boot (22a; Fig. 4A).
Regarding claim 6, Hatano discloses the insertion device according to claim 1, wherein the insertion device is an endoscope (10; Fig. 1).
Regarding claim 7, Hatano discloses the insertion device according to claim 1, wherein the first portion (24/25/26; Figs. 4A-4B) includes a plurality of areas (plurality of areas of 26; Figs. 4B), each of the plurality of areas corresponding to a direction in which the operation lever causes the bending portion to bend in any of up, down, left, and right directions (Fig. 4B), and the second portion (29) is located between the plurality of areas (29 is located between areas of 26; Fig. 4B).
Regarding claim 8, Hatano discloses the insertion device according to claim 2, wherein the elastic body (22a) has an outer periphery having a rectangular shape in a cross-section orthogonal to an axis of the shaft (page 4 – “opening 18m is circular or rectangular”).
Regarding claim 10, Hatano discloses the insertion device according to claim 2, wherein the elastic body (22a) has an outer periphery having a circular shape (Fig. 4B; page 4 – “opening 18m is circular or rectangular”) in a cross-section orthogonal to an axis of the shaft.
Regarding claim 12, Hatano discloses an operation portion for use with an insertion device, the operation portion (18) comprising: an operation portion body (body of 18; Fig. 2); an operation lever (20/21/23; Fig. 2) projecting from the operation portion body (18); and an elastic body (22a; Figs. 4A-4B) comprising: a first portion (24/25/26; Figs. 4A-4B) corresponding to a first tilting direction (up, down, left, right), the first portion having a first hardness; and a second portion (29; Figs. 4A-4B) corresponding to a second tilting direction (page 5 - “as shown in FIG. 4B, the first deformation limiting portion 29A is provided so as to be positioned between the upward tilting operation direction U and the right tilting operation direction R of the shaft portion 21, and the second deformation limiting portion 29B”), the second portion having a second hardness larger than the first hardness (page 5 - “the deformation limiting part 29 is a plate-like part, and its thickness is set so as to have a predetermined flexibility” and page 6 – “the deformation limiting portions 29A, 29B, 29C, and 29D shown in FIG. 4B, which are the deformation limiting portions 29, are formed thicker than the peripheral portion 24 and the central portion 25 as shown by the two-dot chain lines”).
Regarding claim 13, Hatano discloses the operation portion according to claim 12, wherein the operation lever (20/21/23; Fig. 2) includes a shaft (21; Figs. 2 and 4A), the elastic body (22A; Fig. 4A) comprising: a first end (25; Fig. 4A) connected to the shaft (21), and a second end (24/24a; Fig. 4A) connected to the operation portion (18).
Regarding claim 14, Hatano discloses the operation portion according to claim 12, wherein the operation lever is configured to cause a bending portion of the insertion device (page 3 – “An operation element 20 that can be tilted is provided on one surface 18 a of the operation unit main body 18. The operator 20 is a bending operation device, and for example, directly pulls a bending operation wire (not shown) to bend the bending portion 15”), the first tilting direction is a direction in which the operation lever causes the bending portion to bend in any of up, down, left, and right directions (Fig. 4B; page 2 - “bending portion is configured to bend in, for example, two directions of up and down, or four directions of up and down, left and right. A bending operation device that is operated when the bending portion is bent is provided in the operation portion disposed on the proximal end side of the insertion portion”).
Regarding claim 15, Hatano discloses the operation portion according to claim 12, wherein a wall thickness of the first portion (24/25/26; Figs. 4A-4B) is smaller than a wall thickness of the second portion (29; page 6 – “the deformation limiting portions 29A, 29B, 29C, and 29D shown in FIG. 4B, which are the deformation limiting portions 29, are formed thicker than the peripheral portion 24 and the central portion 25 as shown by the two-dot chain lines”).
Regarding claim 16, Hatano discloses the operation portion according to claim 12, wherein the operation lever is a joystick lever (21; Fig. 4A), and the elastic body is a rubber boot (22a; Fig. 4A).
Regarding claim 17, Hatano discloses the operation portion according to claim 12, wherein the operation lever is configured to cause a bending portion of the insertion device (page 3 – “An operation element 20 that can be tilted is provided on one surface 18 a of the operation unit main body 18. The operator 20 is a bending operation device, and for example, directly pulls a bending operation wire (not shown) to bend the bending portion 15”), the first portion (24/25/26; Figs. 4A-4B) includes a plurality of areas (plurality of areas of 26; Figs. 4B), each of the plurality of areas corresponding to a direction in which the operation lever causes the bending portion to bend in any of up, down, left, and right directions (Fig. 4B), and the second portion (29) is located between the plurality of areas (29 is located between areas of 26; Fig. 4B).
Regarding claim 18, Hatano discloses the operation portion according to claim 13, wherein the elastic body (22a) has an outer periphery having a rectangular shape in a cross-section orthogonal to an axis of the shaft (page 4 – “opening 18m is circular or rectangular”).
Regarding claim 20, Hatano discloses the operation portion according to claim 13, wherein the elastic body (22a) has an outer periphery having a circular shape (Fig. 4B; page 4 – “opening 18m is circular or rectangular”) in a cross-section orthogonal to an axis of the shaft.
Allowable Subject Matter
Claims 9 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 9 and 19 each recites wherein a corner of the rectangular shape corresponds to the first tilting direction, a side of the rectangular shape corresponds to the second tilting direction. These limitations, in the context of the other limitations of the claims, considering the claims as a whole with respect to the prior art of record, is neither anticipated nor obvious over the prior art of record.
Claim 11 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) is filed to overcome the nonstatutory double patenting rejection discussed above. Claim 11 recites wherein the elastic body has an inner cavity having a rectangular shape in a cross-section orthogonal to an axis of the shaft. This limitation, in the context of the other limitations of the claim, considering the claim as a whole with respect to the prior art of record, is neither anticipated nor obvious over the prior art of record (see also page 2 of the Notice of Allowance of 01/28/2025 in parent application 17/730,711).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Harada et al. US 2018/0333040 A1 Cover Member of a Bending…
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/RYNAE E BOLER/Examiner, Art Unit 3795
/ANHTUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
08/06/26
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