DETAILED ACTION
1. This Office Action is sent in response to Applicant’s communication received on 07/10/2025 for application number 19/265,397. The Office herby acknowledges receipt of the following and placed of record in file: Specification, Drawings, Abstract, Oath/Declaration, and claims.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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 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.
Priority
3. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed.
Information Disclosure Statement
4. The information disclosure statement (IDS) submitted on 07/10/2025 is in accordance with provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
5. 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).
6. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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).
7. 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.
8. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,360,448. Although the claims at issue are not identical, they are not patentably distinct from each other: Table 1 shows comparison between the instant claims and the U.S. Patent 12,360,448 B1 claims.
Application No.: 19/265,397
1. A visualization system (1), comprising: a proximal image sensor (2a) and a distal image sensor (2b); at least one prism (3), which directs a main beam (6a) of a first imaging beam path (4a) onto the proximal image sensor (2a) and which directs a main beam (6b) of a second imaging beam path (4b) onto the distal image sensor (2b); the at least one prism (3) includes a wavelength-selective first mirror surface (8) by which the second imaging beam path (4b), after entering the at least one prism (3) through a distal entry surface (10), is deflected by two times a tilt angle (α) and, after further deflection at a second mirror surface (9) by two times a deflection angle (β) of the second mirror surface (9), exits from the at least one prism (3) from a distal exit surface (13), which is formed on a base side (18) of the at least one prism (3); and the first mirror surface (8) is tilted by the tilt angle (α) in relation to the main beam (6a) of the first imaging beam path (4a), such that the second imaging beam path (4b) is deflected by two times the tilt angle (α) at the first mirror surface (8) and the tilt angle (α) is selected to be smaller than the deflection angle (β) of the second mirror surface (9): α<β.
Patent No.: 12,360,448
1. A visualization system (1), comprising: a proximal image sensor (2a) and a distal image sensor (2b); at least one prism (3), which deflects a first imaging beam path (4a) onto the proximal image sensor (2a) and a second imaging beam path (4b) onto the distal image sensor (2b); the at least one prism (3) includes a wavelength-selective first mirror surface (8) by which the second imaging beam path (4b), after entering the at least one prism (3) through a distal entry surface (10), is deflected and exits from the at least one prism (3) from a distal exit surface (13), which is formed on a base side (18) of the at least one prism (3); and for a ratio of a length L1 of the base side (18) and a height H1 of the entry surface (10), the following applies: L1/H1>1.5.
Allowable Subject Matter
9. As allowable subject matter has been indicated in claims 1-20, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOWARD D BROWN JR whose telephone number is (571)272-4371. The examiner can normally be reached Monday - Friday 7:30AM - 5:00PM EST.
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, Sathyanarayanan Perungavoor can be reached at 5712727455. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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HOWARD D. BROWN JR
Primary Examiner
Art Unit 2488
/HOWARD D BROWN JR/Examiner, Art Unit 2488
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