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 .
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 limitation(s) 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 limitation(s) is/are: stiffening member in claim 15 given structural recitation in Applicant’s specification [0022].
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/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 this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/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 limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 11, 13-14, 17-20, and 23 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US Patent Application Publication 2016/0089001 to Hara et al (hereinafter “Hara”).
Regarding Claim 11, Hara discloses an imaging scope comprising: a connector (Element 18) arranged at a proximal end of the imaging scope and comprising: a connector body (Element 18A-C) having a handle portion (Element 18C) and a first face (face of 18 where element 23 is indicated); an electrical image connector prong that extends perpendicularly from the first face of the connector body (Element 22, [0038] [0058] [0077]); and a light source connector prong (Element 20) that extends perpendicularly from the first face of the connector body and is spaced apart from the electrical image connector prong, the light source connector prong being configured to receive light originating from a light source of the console ([0057] [0076]); an image sensor arranged at a distal end of the imaging scope (Element 30, [0057]); and an elongate flexible body arranged between the connector and the distal end of the imaging scope (Element 17), the elongate flexible body comprising: at least one light fiber within the elongate flexible body that transmits the light received by the light source connector prong toward the distal end of the imaging scope ([0040]); and at least one electrical conductor within the elongate flexible body that conducts electrical signals between the image sensor and the electrical image connector prong ([0058])
Regarding claim 13, wherein the connector is the only connector of the imaging scope that connects to the console (see Fig. 1)
Regarding Claim 14, wherein the light source connector prong is a fiber optic connector ([0069])
Regarding Claim 17, wherein the connector comprises exactly two connector prongs extending from the connector body, and wherein the electrical image connector prong and the light source connector prong are the only connector prongs of the imaging scope (see Fig. 3, element 21 is an air cap, [0076])
Regarding Claim 18, wherein the electrical image connector prong and the light source connector prong both extend from the same first face of the connector body, and wherein the connector body comprises a single, unitary structure (see Fig. 3)
Regarding Claim 19, wherein the connector is a single connector, and wherein the single connector combines both light and image signal transmission, and wherein the electrical image connector prong and the light source connector prong are arranged on the same connector assembly (See Fig. 3, [0074])
Regarding claim 20, Hara discloses an imaging system comprising: an imaging scope (Element 10) configured to be removably connected to a console, the imaging scope comprising: a connector (Fig. 1, Element 18) arranged at a proximal end of the imaging scope and comprising: a connector body (Element 18A-C) having a handle portion (Element 18C) and a first face (face of 18 indicated by the arrow of element 23); an electrical image connector prong that extends perpendicularly from the first face of the connector body (Element 22, [0077]); and a light source connector prong that extends perpendicularly from the first face of the connector body and is spaced apart from the electrical image connector prong, the light source connector prong being configured to receive light originating from a light source of the console (Element 20, [0057] [0076]); an image sensor arranged at a distal end of the imaging scope (Element 30, [0057]); and an elongate flexible body arranged between the connector and the distal end of the imaging scope (Element 17), the elongate flexible body comprising: at least one light fiber within the elongate flexible body that transmits the light received by the light source connector prong toward the distal end of the imaging scope ([0040]); and at least one electrical conductor within the elongate flexible body that conducts electrical signals between the image sensor and the electrical image connector prong ([0058])
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hara in view of US Patent Application Publication 2019/0357751 to Friedlander (hereinafter “Friedlander”).
Regarding Claim 28, Hara discloses a console comprising: a housing (Element 11); a light source disposed within the housing (Element 68); and an outlet provided at the housing and configured to receive a connector of an imaging scope (Element 12), the outlet comprising: a first face of the outlet (see Fig. 1, 12); an electrical image port extending perpendicularly inward from the first face of the outlet and being configured to receive an electrical image connector prong of the connector of the imaging scope, and being electrically coupled to deliver electrical signals from the imaging scope to the processor ([0038] [0058] [0077]); and a light source connector port extending perpendicularly inward from the first face of the outlet and being configured to receive a light source connector prong of the connector and to provide light from the light source to the imaging scope (Fig.3, interface of 12 and 20, [0057] [0076]). However, Hara does not disclose that the console comprises a video processor. Friedlander discloses a console for an endoscope comprising a video processor ([0194]). It would have been obvious before the effective filing date of the claimed invention to modify Hara to include a video processor in order to convert raw video signals into a digital form that can be displayed on a screen.
Regarding claim 29, Hara teaches a display device wherein the console displays images captured by the imaging scope on the display device (Element 19, [0049])
Claim(s) 31-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hara in view of US Patent Application Publication 2011/0116675 to Terlizzi (hereinafter “Terlizzi”).
Regarding claim 31, Hara discloses an imaging scope comprising a connector arranged at a proximal end of the imaging scope (Element 18) and comprising: a connector body (Element 18A-C) having a handle portion (Element 18C) and a first face (face of 18 where Element 23 has been indicated); and a first prong that extends perpendicularly from the first face of the connector body ([0058]), an image sensor arranged at a distal end of the imaging scope (Element 30, [0057]); and an elongate flexible body (Element 17) arranged between the connector and the distal end of the imaging scope, the elongate flexible body comprising: at least one electrical conductor within the elongate flexible body that conducts electrical signals between the image sensor and the first prong ([0038] [0058] [0077]). However, Hara does not disclose that the first prong comprises a stereo audio-type prong. Terlizzi discloses a combined audio and video prong that has audio and video contacts on the same plug and jacks ([0045]). Further, Terlizzi teaches a single stereo audio-type prong with the ability to deliver both video and audio simultaneously ([0068] [0078]). It would have been obvious before the effective fling date of the claimed invention to modify the electrical image connector prong to include a stereo audio-type prong such as that taught by Terlizzi as it may be advantageous to acquire sound signals as well as video, particularly when the scope is imaging within the lungs or GI tract.
Regarding Claim 32, Hara teaches that the connector further comprises: a second prong that extends perpendicularly from the first face of the connector body and is spaced apart from the first prong (Element 20, [0057] [0076])
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hara in view of Hara. Hara does not disclose that the electrical image connector prong is a stereo audio-type prong. However, Terlizzi discloses a combined audio and video prong that has audio and video contacts on the same plug and jacks ([0045]). Further, Terlizzi teaches a single stereo audio-type prong with the ability to deliver both video and audio simultaneously ([0068] [0078]). It would have been obvious before the effective fling date of the claimed invention to modify Hara to include the electrical image connector prong to include a stereo audio-type prong such as that taught by Terlizzi as it may be advantageous to acquire sound signals as well as video, particularly when the scope is imaging within the lungs or GI tract.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hara. Hara does not teach that the elongate flexible body has an outer diameter of 2 millimeters. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the outer diameter of the elongate flexible body of Hara to be 2 millimeters since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the elongate flexible body would not operate differently with the claimed diameter. Further, Applicant places no criticality on the range claimed, indicating in paragraph [0020] of the Applicant’s specification paragraph [0020] that 2 millimeters is just one option for the diameter.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hara in view of Friedlander. Hara does not disclose that the elongate flexible body further comprises a stiffening member configured to resist over-bending. However, Friedlander discloses a scope wherein the elongate flexible body further comprises a stiffening member configured to resist over-bending ([0095]). It would have been obvious before the effective filing date of the claimed invention to modify Hara to include a stiffening member such as that taught by Friedlander in order to selectively reduce the flexibility of the scope shaft.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hara in view of Friedlander. Hara does not disclose that the at least one light fiber is configured to transmit light having wavelengths between 400 nm to 500 nm. However, Friedlander disclose an imaging scope wherein the at least one light fiber is configured to transmit light having wavelengths between 400 nm to 500 nm ([0211]). It would have been obvious before the effective filing date to modify Hara to include light transmission in 400 to 500 nm such as that taught by Friedlander in order to produce blue light which is known to be effective for illumination inside the body (Friedlander [0211]).
Claim(s) 22 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hara in view of US Patent Application Publication 2012/0100729 to Edidin (hereinafter “Edidin”). Hara does not disclose a magnet within the connector body and adjacent the first face and a magnetic sensor arranged adjacent to the outlet and configured to detect whether a magnet is present within the connector body when the connector is plugged into the outlet. However, Edidin discloses an endoscope comprising a magnet within the connector body and adjacent the first face ([0067]) and a magnetic sensor arranged adjacent to the outlet and configured to detect whether a magnet is present within the connector body when the connector is plugged into the outlet ([0067]). It would have been obvious before the effective filing date of the claimed invention to modify Hara to include the magnet and magnetic sensor such as that taught by Edidin in order to prevent detachment of the endoscope from the console as suggested by Edidin ([0067]).
Claim(s) 26 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hara in view of Friedlander.
Regarding Claim 26, Hara discloses the console, wherein the console includes a light source that generates light to be delivered to the at least one light fiber within the elongate flexible body (Element 12 and 68). However, Hara does not disclose that the light source includes both a visible light source and a UV light source. Friedlander discloses an endoscope comprising a light source with both visible and UV light ([0211] [0212]). It would have been obvious before the effective filing date of the claimed invention to modify Hara to include both visible and UV light sources such as that taught by Friedlander as the visible light can be used for illumination and the UV light can detect patient conditions and analytes.
Regarding Claim 27, Friedlander further teaches that the UV light source is a UVC light source ([0211] emission between 200-280 nm)
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hara and Friedlander as applied to claim 28 above, and further in view of Terlizzi. Hara and Friedlander do not disclose that the electrical image connector prong is a stereo audio-type prong. However, Terlizzi discloses a combined audio and video prong that has audio and video contacts on the same plug and jacks ([0045]). Further, Terlizzi teaches a single stereo audio-type prong with the ability to deliver both video and audio simultaneously ([0068] [0078]). It would have been obvious before the effective fling date of the claimed invention to modify Hara and Friedlander to include the electrical image connector prong to include a stereo audio-type prong such as that taught by Terlizzi as it may be advantageous to acquire sound signals as well as video, particularly when the scope is imaging within the lungs or GI tract.
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.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,357,164 in view of Hara. Claim 9 of the ‘164 patent teaches all of the limitations of claim 11 except for the light source connector prong, the image sensor, and the electrical conductor. However, Hara discloses a scope comprising:
a light source connector prong that extends perpendicularly from the first face of the connector body and is spaced apart from the electrical image connector prong, the light source connector prong being configured to receive light originating from a light source of the console (Element 20, [0057] [0076]),
an image sensor arranged at the distal end of the imaging scope (Element 30, [0057]), and
at least one electrical conductor within the elongate flexible body that conducts electrical signals between the image sensor and the electrical image connector prong ([0058]).
It would have been obvious before the effective filing date of the claimed invention to modify the ‘164 patent to include the light source connector prong, the image sensor, and the electrical conductor as Hara has demonstrated that these elements allow for imaging using illumination and the images can be transmitted to a console to be shown on a display which can help to diagnose a patient.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,357,164 in view of Hara. Claim 9 of the ‘164 patent teaches all of the limitations of claim 20 except for a light source connector prong and an image sensor. However, Hara discloses a scope comprising:
a light source connector prong that extends perpendicularly from the first face of the connector body and is spaced apart from the electrical image connector prong, the light source connector prong being configured to receive light originating from a light source of the console (Element 20, [0057] [0076]),
an image sensor arranged at the distal end of the imaging scope (Element 30, [0057])
It would have been obvious before the effective filing date of the claimed invention to modify the ‘164 patent to include the light source connector prong and the image sensor as Hara has demonstrated that these elements allow for imaging using illumination and the images can be transmitted to a console to be shown on a display which can help to diagnose a patient.
Claim 28 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,357,164 in view of Hara. Claim 1 of the ‘164 Patent discloses all of the limitations of claim 28 except for the light source and the electrical image port. However, Hara discloses an endoscope console comprising:
A light source disposed within the housing (Element 68), and
an electrical image port extending perpendicularly inward from the first face of the outlet and being configured to receive an electrical image connector prong of the connector of the imaging scope, and being electrically coupled to deliver electrical signals from the imaging scope to the video processor ([0038]0058] [0077])
It would have been obvious before the effective filing date of the claimed invention to modify the ‘164 patent to include the light source and the electrical image port as Hara has demonstrated that these elements allow for imaging using illumination and the images can be transmitted to a console to be shown on a display which can help to diagnose a patient.
Claim 31 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,357,164 in view of Hara. Claim 9 of the ‘164 patent discloses all of the limitations of Claim 31 except for the at least one electrical conductor within the elongate flexible body that conducts electrical signals between the image sensor and the first prong. Hara discloses an imaging scope comprising at least one electrical conductor within the elongate flexible body that conducts electrical signals between the image sensor and the first prong ([0038] [0058] [0077]). It would have been obvious before the effective filing date of the claimed invention to modify the ‘164 patent to include the electrical conductor such as that taught by Hara in order to receive the endoscopic images for display on a screen.
Allowable Subject Matter
Claim 25 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. The prior art does not teach a connector member for an imaging scope wherein the magnetic sensor detects the magnet and sends a signal to the console, and wherein the console determines a pixel size associated with the image sensor based on the signal. Edidin would be the closest art to teach this limitation but does not discuss a pixel size associated with the sensor based on the sensed magnetic connection.
Conclusion
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/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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