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 .
Response to Amendment
The present office action is made in response to the amendment filed by applicant on 05/22/2026. It is noted that in the amendment, applicant has made changes to the claims. There was not any change being made to the abstract, the drawings and the specification.
3. Regarding the claims, applicant has amended claims 1-2, 13, 18 and 28.
Response to Arguments
4. The amendments to the claims as provided in the amendment of 05/22/2026, and applicant’s arguments provided in the mentioned amendment, pages 12-15, have been fully considered and resulted the following conclusions.
A) Regarding the claims, the following conclusions are made:
A1) because applicant has not added/canceled any claim into/from the application, thus the pending claims 1-31; and
A2) Each of claims 1 and 18 as amended is now allowable with respect to the prior art, thus the Election/Restriction mailed to applicant on 06/25/2024 is now withdrawn, see the section of Election/Restriction in the present office action. As a result, all pending claims 1-31 are examined in the present office action.
B) Regarding Claim Interpretation set forth in the office action of 01/22/2026, the amendments to the claims as provided in the amendment of 05/22/2026, and applicant’s arguments provided in the mentioned amendment, page 12, have been fully considered and are sufficient to overcome the Claim Interpretation set forth in the mentioned office action.
C) Regarding the rejection of claims 1-4, 11-19 and 26-31 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the office action of 01/22/2026, the amendments to the claims as provided in the amendment of 05/22/2026, and applicant’s arguments provided in the mentioned amendment, pages 12-13, have been fully considered and are sufficient to overcome the rejection of claims 1-4, 11-19 and 26-31 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the mentioned office action.
However, the amendments to the claims raise new rejection of the claims under 35 U.S.C. 112 as provided in the present office action.
D) Regarding the rejection of claims 1-4, 11-19, and 26-31 under 35 U.S.C. 103 as being unpatentable over Siebenmorgen (DE 10 2015 209 758 A1, hereafter, Siebenmorgen ‘758) in view of Siebenmorgen (DE 10 2018 113 054 A1, hereafter, Siebenmorgen ‘054) as set forth in the office action of 01/22/2026, the amendments to the claims as provided in the amendment of 05/22/2026, and applicant’s arguments provided in the mentioned amendment, pages 14-15, have been fully considered and are persuasive thus the rejection of claims 1-4, 11-19, and 26-31 under 35 U.S.C. 103 as being unpatentable over Siebenmorgen (DE 10 2015 209 758 A1, hereafter, Siebenmorgen ‘758) in view of Siebenmorgen (DE 10 2018 113 054 A1, hereafter, Siebenmorgen ‘054) as set forth in the mentioned office action is now withdrawn.
Election/Restrictions
5. Claims 1 and 18 each is allowable. The restriction requirement between Inventions I and II, as set forth in the Office action mailed on 06/25/2024 , has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of 06/25/2024 is now withdrawn. Claims 5-10 and 20-25, directed to Invention I are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Interpretation
6. 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.
7. 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.
8. 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 is “an observation optical unit” as recited in each of claim 10 and 25.
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 Objections
9. Claim 13 is objected to because the claim contains some features which are recited in its base claim. Appropriate correction is required.
In claim 13: the feature thereof “a spatial filter for blocking either light of a zero-th diffraction order or light of diffraction orders higher than zero” (lines 6-7) is recited in its base claim 1 on lines 14-15, and the feature thereof “wherein the controllable phase mask is arranged in a plane that is optically conjugate to an object plane of the microscope objective” (lines 12-13) is recited in its base claim 1 on lines 5-6. Should the two mentioned features recited in claim 13 be deleted?
Claim Rejections - 35 USC § 112
10. 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.
11. Claims 1-31 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a) Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the different first regions” (line 20) lacks a proper antecedent basis. Should the term of “the” in the mentioned feature be deleted?
b) Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the spatially dependent phase angle deviation ⱷ(x)” (line 3) lacks a proper antecedent basis. Further, the claim is indefinite because it is unclear about what the parameters “ⱷ0 “, I(x) and Imax are. Applicant needs to prove a definition/explanation of each mentioned parameters.
c) Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because each of the features thereof “the distance” (line 5) and “the optical axis” (line 5) lacks a proper antecedent basis.
d) Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reason as set forth in element a) above.
e) Claim 25 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reason as set forth in element b) above.
f) The remaining claims are dependent upon the rejected base claims and thus inherit the deficiencies thereof.
Allowable Subject Matter
11. Claims 1-31 would be allowable if rewritten to overcome the rejections of the claims under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the present office action.
12. The following is a statement of reasons for the indication of allowable subject matter:
a) The method for light sheet microscopy as recited in the independent claim 1 is allowable with respect to the prior art, in particular, the Germany reference Nos. 10 2015 209 758 A1 and 10 2018 113 054 A1 by the structure of the controllable phase mask and the arrangement of the mask with respect to the other components of the microscope to satisfy the features thereof “wherein the controllable phase mask …is homogenized” (claim 1 on lines 5-23). Such a structure of the controllable phase mask and the arrangement of the mask to satisfy the mentioned features is not disclosed in the prior art.
b) The method for light sheet microscopy as recited in the independent claim 18 is allowable with respect to the prior art, in particular, the Germany reference Nos. 10 2015 209 758 A1 and 10 2018 113 054 A1 by the structure of the controllable phase mask and the arrangement of the mask with respect to the other components of the microscope to satisfy the features thereof “wherein the controllable phase mask …is homogenized” (claim 18 on lines 4-21). Such a structure of the controllable phase mask and the arrangement of the mask to satisfy the mentioned features is not disclosed in the prior art.
Conclusion
13. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached on M – Th (6:00 am to 17:00 pm)
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached on (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
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