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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the folded portion that is folded back from one end of the first region in the first direction (in one interpretation of claim 5), the first folded portion that is folded back from the one end to the other end side of the first region in the first direction (claim 6), the second folded portion that is folded back from the first folded portion to one end side of the first region (claim 6) or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file. Accordingly, the benefit of foreign priority under 35 U.S.C. 119(a)-(d) is obtained.
Claim Rejections - 35 USC § 112
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.
Claims 5-8 are 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(s) 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.
In regards to claim 5, the claim reads “a folded portion that is folded back from one end of the first region in the first direction” [lines 2-3]. This could be interpreted to mean that the folded portion is in a plane which is not a parallel plane as the first region, but simultaneously is a parallel plane as the first region. The applicant does not have support in their initial disclosure for this. While the claim can be interpreted in a broad fashion such that the applicant’s initial disclosure supports the limitation, it is clear that this is a mistranslation of the claim from Japanese.
In regards to claim 6, the claim reads “the folded portion includes a first folded portion that is folded back from the one end to the other end side of the first region in the first direction”. Here, “the one end” is an end of the first region, and “the other end side of the first region” is newly recited (see the rejection under 112 (b) hereinbelow). The applicant does not have support for this feature. See in particular applicant’s Fig.5. It is clear that this is a mistranslation of the claim from Japanese.
In regards to claim 6, the claim reads “the folded portion includes…a second folded portion that is folded back from the first folded portion to one end side of the first region”. The applicant does not have support for this feature. See in particular applicant’s Fig.5. It is clear that this is a mistranslation of the claim from Japanese.
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 6-8 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 claim 6, the claim reads ““the folded portion includes a first folded portion that is folded back from the one end to the other end side of the first region in the first direction” [lines 2-3]. This could be interpreted to require a feature not present in the applicant’s initial disclosure, or as a drafting error that cannot be resolved without resorting to undue speculation. For the purposes of prosecution, the latter is held to be the case.
In regards to claim 6, the claim reads “the folded portion includes…a second folded portion that is folded back from the first folded portion to one end side of the first region”. Interpreted at face value, this limitation is new matter unsupported by the applicant’s initial disclosure (see in particular applicant’s Fig.5). Alternatively this could be interpreted as a drafting error that cannot be resolved without resorting to undue speculation. For the purposes of prosecution, the latter is held to be the case.
In regards to claim 6, the claim recites the limitation "the other end side of the first region" in line 3. There is insufficient antecedent basis for this limitation in the claim. Therefore, the claim is unclear. For the purposes of prosecution, it will be assumed this is a newly recited item.
Before a proper rejection can be rendered, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Since dependent claim 6 fails to satisfy the requirements of the second paragraph of 35 U.S.C. 112, no rejection of this claim on the art may be rendered. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) ("If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite."). See MPEP 2173.06
It is plain that all of the claims, even when themselves clear in their meaning as written, are mistranslations that do not capture the applicant’s apparent intended scope. The examiner suggests the claims be completely and fully revised by someone familiar with the subject matter and fluent in Japanese and English.
Claim Rejections - 35 USC § 102
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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Kohno et al. (US 2022/0313068).
In regards to Claim 1, Kohno discloses an imaging unit of an endoscope comprising:
an imaging element [35 within 57, Figs.5, 10, 29-31, para.49];
a circuit board [59, Figs.29-31, para.56, 116] to which the imaging element is connected; and
a cable [33, Figs.29-31, para.49] connected to the circuit board,
wherein the circuit board includes a first region [109, Figs.16, 29-31, para.99, 116] in which the imaging element is disposed and that extends in a first direction, and a second region [107, 111, Figs.16, 29-31] that extends in a second direction intersecting the first direction at an angle of less than 90 degrees, as viewed in a direction perpendicular to a light-receiving surface [surface of 35, Figs.5, 10] of the imaging element [as physical objects extend in all possible directions], and
the cable is connected to the second region [Figs.29-31, para.49].
In regards to claim 2, Kohno discloses the imaging unit according to claim 1, wherein the first direction and an extending direction of the cable from the second region intersect each other [Figs.29-31; as physical objects extend in all possible directions].
In regards to claim 3, Kohno discloses the imaging unit according to claim 2, wherein the first direction is a direction along a long side of the imaging element [the first direction could be along a “long” side of the imaging element and intersect a line coming from the cable. Note that physical objects extend in all possible directions.].
In regards to claim 4, Kohno discloses the imaging element according to claim 3, wherein the circuit board has flexibility [Figs.16, 29-31, para.7, 24, 97].
In regards to claim 5, Kohno discloses the imaging element according to claim 4, wherein the circuit board has a folded portion that is folded back from one end of the first region in the first direction [111, Figs.29-31], and
at least a part of the folded portion constitutes the second region [as discussed in the rejection of claim 1 hereinabove.].
Claims 1-4 and 9-13 are under 35 U.S.C. 102(a)(1) as anticipated by Hansen et al. (US 2022/0151480).
In regards to Claim 1, Hansen discloses an imaging unit of an endoscope comprising:
an imaging element [53 within 37, Figs.6, 16-17, para.90, 112, 114];
a circuit board [51, Figs.6, 17, para.89, 112] to which the imaging element is connected; and
a cable [33, Figs.29-31, para.49] connected to the circuit board [electrically coupled to the circuit board, hence connected: para.112],
wherein the circuit board includes a first region [arbitrary region of 51 comprising where 53 is connected, Figs.6, 17] in which the imaging element is disposed and that extends in a first direction [physical objects extend in all possible directions], and a second region [arbitrary region of 51 that does not comprise where 53 is connected, Figs.6, 17] that extends in a second direction [physical objects extend in all possible directions] intersecting the first direction at an angle of less than 90 degrees, as viewed in a direction perpendicular to a light-receiving surface [surface of 53 aligned with optical axis, Fig.6] of the imaging element, and
the cable is connected to the second region [para.112: at least indirectly connected].
In regards to claim 2, Hansen discloses the imaging unit according to claim 1, wherein the first direction and an extending direction of the cable from the second region intersect each other [Figs.3, 6, 17; as physical objects extend in all possible directions].
In regards to claim 3, Hansen discloses the imaging unit according to claim 2, wherein the first direction is a direction along a long side of the imaging element [the first direction could be along a “long” side of the imaging element and intersect a line coming from the cable. Note that physical objects extend in all possible directions.].
In regards to claim 4, Hansen discloses the imaging element according to claim 3, wherein the circuit board has flexibility [all objects have the property of flexibility].
In regards to claim 9, Hansen discloses an endoscope comprising:
an endoscope insertion part [14, Fig.5, para.77] including the imaging unit [37, 114, Figs.6, 16-17, para.112] according to claim 1 at a distal end part [100, Figs.6, 16-17, para.77, 106] of the endoscope insertion part,
wherein the imaging unit includes an imaging optical system [54, Fig.6, para.89-90, 112] that collects subject light on the imaging element,
the distal end part is provided with an elevator [200, Figs.16-19, para.112-114] for a treatment tool,
an objective lens [first lens to receive light of 57, Figs.6, 16, para.89-91, 112] of the imaging optical system is provided toward a lateral side and a proximal end side of the distal end part [Fig.16, “towards” not requiring the optical system to be closer to these sides than anything else], and
the objective lens and the elevator are provided at positions deviated from each other in an intersection direction intersecting a movable direction of the elevator as viewed in a longitudinal direction of the endoscope insertion part [Figs.16, 19a-b: the elevator elevation vector does not intersect the objective lens. The “intersection direction” could be any direction whatsoever intersecting this “movable direction”, as set forth here.].
In regards to claim 10, Hansen discloses the endoscope according to claim 9, wherein the light-receiving surface of the imaging element is provided in the intersection direction [the intersecting direction could be designated as such: see the rejection of claim 9 hereinabove].
In regards to claim 11, Hansen discloses the endoscope according to claim 10, wherein the first region of the circuit board is provided on a side opposite to an elevator side with respect to the second region as viewed in a direction perpendicular to the light-receiving surface [Fig.17: the second region could be designated in this fashion].
In regards to claim 12, Hansen discloses the endoscope according to claim 9, wherein an optical axis of the objective lens extends in a direction along a short side of the imaging element [Fig.17], and
as viewed in a direction perpendicular to the light-receiving surface, a first angle formed by a radial direction of the distal end part and a direction in which the optical axis extends is 5 degrees or more and 15 degrees or less [Figs.16-17: the radial direction could be designated in this fashion].
In regards to claim 13, Hansen discloses the endoscope according to claim 12, wherein a difference between an angle between the first direction and the second direction and the first angle is plus or minus 5 degrees or less [these directions and resultant angles could be designated in this fashion].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Komi (US 5,569,162)
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.
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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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