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 .
Remarks
This Office Action fully acknowledges Applicant’s remarks filed on June 2nd, 2026. Claims 1-4, 6, 8, and 11-21 are pending. Claims 11-20 are withdrawn from consideration. Claims 5, 7, 9, and 10 are canceled.
Claim Interpretation
The claimed beam height and beam width are interpreted in their relative geometrical disposition to be coincident with that disclosed in Applicant’s disclosure (pars.[0084,0085], fig. 4, for example).
Claim Rejections - 35 USC § 103
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 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) 1-3, 8, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Evans et al. (US 2004/0053243).
With regard to claims 1 and 21, Evans discloses an analytical instrument for sperm comprising a flow channel 2 (nozzle 2 affords a structure for flowing a sample and constitutes a flow channel, as claimed; this is further seen through Applicant’s disclosure in par.[0060] of US 2021/0389246 in which the flow channel may be characterized s a nozzle) through which a coaxial flow as claimed may flow (herein, Examiner notes that none of the sheath fluid, sample fluid, inner core stream and their flowing are drawn to positively recited elements of the instrument and are instead drawn to prospective workpieces wherein the recitation remains drawn to the positively claimed structure of a flow channel, wherein Evans discloses a commensurately arranged and structured flow channel in as much as recited herein that is fully capable of flowing such prospective coaxial flow of a fluid having an inner core stream of a sample fluid and a outer stream of a sheath fluid as claimed, including that of the 24 to 40 microns at an interrogation location; Further, the discussion to “while in operation” is drawn to a conditional process recitation that is not afforded patentable weight in a device and noting that the recitation itself is conditional) (pars.[0082,0083], figs. 1, 2, 22, for example). Further, as in cl. 1, Evans discloses a laser 12 that produces a laser beam having a beam width and an orthogonal beam height (pars.[0006,0084], figs. 5&16, for example). Evans further discloses beam shaping optics 30 that shape the laser beam “such that between a center half and a center quarter…” as claimed. Herein, the beam shaping optics 30 of Evans are fully capable of shaping “such that between a center half and a center quarter…” as claimed, as Evans provides a commensurate structural element in that of beam shaping optics 30, wherein Evans provides an interrogation laser beam wherein the sperm passes through the beam, the emitted light is detected as the sperm flows therethrough, and reducing the beam height reduces the number of coincident sperm heads within the beam. Herein, the inner core stream is not a positively required element of the device (as discussed above, it is a prospective workpiece, and dependent upon various process steps of flowing prospective fluids that are not positively claimed and such process steps not having patentable weight in the device claim); such beam shaping optics 30 of Evans are fully capable of shaping the beam as claimed for a given, prospective inner core stream (par.[0110], figs. 15, 16, for example). Evans further discloses a beam path along which the laser beam traverses between the laser and the beam shaping optics (see fig. 5 and arrow projecting from the laser 12). Evans further discloses at least one detector 32 that generates a signal in response to electromagnetic radiation from the interrogation location, and an analyzer 13 that receives the signal from the at least one detector and analyzes the signal to detect X-chromosome bearing and Y-chromosome bearing sperm (pars.[0084,0085,0088,0110], cl. 32; figs. 1,15, 16, for example).
With regard to claim 2, the recitation is drawn to an intended use recitation not afforded patentable weight wherein the core stream is predicated on prospective workpieces and processes not positively recited herein and not attributed patentable weight in the device claim.
With regards to claim 3, Evans provides a laser that is capable of producing a beam width to beam height ratio as claimed. Evans typifies a conventional 80 micron width x 30 micron height (i.e. 2.667:1) and an implementation at 160 microns width x 20 microns height when used for bovine sperm (i.e. 8:1), which shows that the provided laser is fully capable of providing a beam width to beam height ratio falling within these two bounds that are coincident with the claimed ranges. The claims are drawn to a device, wherein the particular process of producing such a beam is not required, but is drawn to a capability of the claimed laser that produces a beam width and orthogonal beam height; as discussed above, Evans provides a commensurate structure of a laser (and likewise with respect to the claimed beam shaping optics; however, further noting that the beam height and width production have been recited within the recitation to the laser itself) as claimed and further discusses tuned beam width to beam height ratios that further speak to an ability to adjust a produced beam width to beam height ratio (par.[0108], for example).
With regard to claim 8, Evans provides an analytical instrument that is configured to generate a population of sperm having a skewed sex ratio of viable sperm in as much as claimed and required herein as Evans provides to commensurately disclose the arrangement of elements to the analytical instrument of claim 1/8 and is thus said to be fully capable of such “generating a population…having a skewed sex ratio” in as much as claimed and recited herein, and further noting that claim 8 does not add any further structural element(s) or structural detail to a prior-claimed element and is drawn to a characterization of the instrument as a whole that is found by Evans.
With regards to claims 1 and 21, Evans discloses beam shaping optics that shape the laser beam to a beam height that is about 20 microns, and such beam height provides that the coincidence of multiple sperm heads being within the reduced height beam pattern during the same measured event is reduced (par.[0105], cls. 20, 99, 133, 160).
Evans does not specifically disclose that the beam shaping optics shape the laser beam to a beam height that is in a range of 15 to 19 microns.
It would have been obvious to one of ordinary skill in the art to try a beam height that is in the range of 15 to 19 microns such as suggested by Evans, wherein about 20 microns reasonably affords a height in the range of 15 to 19 microns that would have a reasonable expectation of success for likewise providing a beam height that the coincidence of multiple sperm heads being within the reduced height beam pattern during the same measured event is reduced.
This is further seen through routine experimentation. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144 II, A.
Further, while Evans discloses in par.[0105] that “…vertical beam heights of less than 20 microns did not provide additional gain in resolution” does not provide a teaching away or to that of inoperability therewith. It remains that Evans explicitly discloses about 20 microns, and even absent additional gain in resolution, there is a reasonable expectation of success to the utilization of such beam heights in a range of 15 to 19 microns for the disclosed purpose of providing that the coincidence of multiple sperm heads being within the reduced height beam pattern during the same measured event is reduced.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Evans, as applied to claims 1-3, 8, and 21, and in further view of Sharpe et al. (US 2014/0092378), hereafter Sharpe.
Evans does not specifically disclose beam shaping optics that shape the beam width to a range as in claim 4.
Sharpe discloses a UV diode laser excitation in flow cytometry (abstract). Sharpe discloses sperm sorting with flow cytometry and therewith provides beam shaping optics to provide a beam profile for cell illumination at an inspection point, wherein the beam profile dimensions may be altered to provide a 26 micron height x 100 micron width.
It would have been obvious to one of ordinary skill in the art to modify Evans to utilize beam shaping optics to shape a beam width in a range of about 90 to 110 microns such as taught by the analogous prior art of Sharpe to sperm sorting by optical flow cytometry in order to provide a suitable focused beam spot width for assessing sperm cells as likewise desired in Evans that would have a reasonable expectation of success therein.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Evans, as applied to claims 1-3, 8, and 21, and in further in view of Feng et al. (US 2018/0188183), hereafter Feng.
Evans does not specifically disclose that the beam has a length that is less than 18 inches as in claim 6.
Feng discloses a modular optical analysis system (abstract). Feng discloses light beams that enter beam shaping optics in which the position of the beam shaping lens may be controlled with tight tolerance near or in close proximity to the light sources to control beam divergence and optimize shaping of the light beams, such as by providing sufficient beam shape while still enabling the entire beam shape to pass through the objective without clipping any light (par.[0072], for example).
It would have been obvious to one of ordinary skill in the art to modify Evans to provide a beam path length between the laser and the beam shaping optics to be less than 18 inches such as suggested by Feng as given by the teaching to provide the beam shaping optics near or in close proximity to the light source to control beam divergence and control beam shaping to remain to optimize shaping while still enabling the entire beam to pass without clipping and as would be ascertainable through routine experimentation to values less than 18 inches as reasonably afforded distances to try given disclosure to utilizing “near or close proximity” to the light source. See also MPEP 2144, II, A. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4, 6, 8, and 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
As discussed above, Claims 1-4, 6, 8, and 21 are herein rejected under 35 USC 103 as being unpatentable over Evans, and in view of the further prior art cited above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEIL N TURK whose telephone number is (571)272-8914. The examiner can normally be reached M-F 930-630.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at 571-270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NEIL N TURK/Primary Examiner, Art Unit 1798
