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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/14/2025 has been entered.
Response to Amendment
The present office action is made in response to the amendments filed by applicant on 09/12/2025 and 10/14/2025.
In the amendment of 09/12/2025, applicant has made changes to the drawings and the specification. There is not any change being made to the abstract and the claims.
A) Regarding the drawings, applicant has submitted one replacement sheets contained figs. 12-13; and
B) Regarding the specification, applicant has submitted a substitute specification with its marked-up copy showing the changes to the specification and a statement that the substitute specification does not contain any new matter.
5. In the amendment of 10/14/2025, applicant has made changes to the drawings and the claims. There is not any change being made to the abstract and the specification.
A) Regarding the drawings, applicant has submitted a replacement sheet contained figs. 12-13; and
B) Regarding the claims, applicant has amended claims 1-2 and 18.
6. Both amendments filed by applicant on 09/12/2025 nd 10/14/2025 have been entered and the following conclusions are made:
A) Regarding the claims, because applicant has not added/canceled any claim into/from the application, thus the pending claims are still claims 1-31 in which claims 1-4, 11-19 and 26-31 are examined in the present office action, and claims 5-10 and 20-25 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention.
Applicant should note that the non-elected claims 5-10 will be rejoined if the linking claim 1 is later found as an allowable claim, and the non-elected claims 20-25 will be rejoined if the linking claim 18 is later found as an allowable claim.
B) Regarding the drawings, the replacement sheet contained figs. 12-13 as filed on 09/12/2025 has not been entered. The replacement sheet contained figs 12-13 as filed on 10/14/2025 has been entered.
C) The substitute specification as filed in the amendment of 09/12/2025 has been entered.
D) The amendments to the claims as provided in the amendment of 10/12/2025 have been entered.
Response to Arguments
7. The amendments to the drawings as provided in the amendment of 10/14/2025, the amendments to the specification as provided in the amendment of 09/12/2025, the amendments to the claims as provided in the amendment of 10/14/2025, and applicant’s arguments provided in the amendment of 09/12/2025, pages 13-18, and in the amendment of 10/14/2025, pages 12-17, have been fully considered and resulted the following conclusions.
A) The amendments to the drawings as provided in the amendment of 10/14/2025, and applicant’s arguments provided in the amendment of 10/14/2025, page 12, have been fully considered and are sufficient to overcome the objections to the drawings as set forth in the office action of 06/12/2025.
B) The substitute specification contained changes to the specification as provided in the amendment of 09/12/2025 and applicant’s arguments provided in the amendment of 09/12/2025, page 14, have been fully considered and are sufficient to overcome the objections to the specification as set forth in the office action of 06/12/2025.
C) Regarding Claim Interpretation set forth in the office action of 11/12/2024, applicant’s arguments provided in the amendment of 09/12/2025, pages 14-15, and in the amendment of 10/14/2025, pages 12-13, have been fully considered but they are not persuasive and the Claim Interpretation set forth in the office action of 06/12/2025 is repeated in the present office action.
Applicant is respectfully invited to review the limitations thereof “a control device” as recited in claim 13; “optical components” as recited in claim 13; and “a control unit” as recited in claim 28, while the claim limitations each does 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 each claim limitations 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. For example, what kind of “device” recited in claim 13 being used to control the phase mask so that the phase mask produces a phase pattern and intensity of illumination with specific functions/results as recited in its base claim 1 on lines 8-16? etc.
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 06/12/2025, the amendments to the claims as provided in the amendment of 10/14/2025, and applicant’s arguments provided in the mentioned amendment, pages 13-17, have been fully considered but are not persuasive for the following reasons.
A) Regarding applicant’s arguments that “Applicant noted that these portions of … the x-y beam profiles are “in the pupil”, amendment of 10/14/2025, page 14 on lines 13-16, it is noted that the features upon which applicant relies (i.e., phase distributions are in the plane in which the phase mask 4 is arranged) are not recited in the rejected claim(s). It is also noted that the present claim(s) do(es) not recite the particular plane where the phase mask is located. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
b) Regarding applicant’s arguments that combination of arts does not disclose that the phase angle deviation impressed on the illumination light in the first regions is controlled in a spatially dependent manner, see amendment of 10/14/2025, pages 14-16, the examiner respect disagree and respectfully invited the applicant to review the claims with claimed language being provided and the arts used to reject the claims. Applicant should note that the use of a spatial light modulator wherein each pixel/section of the modulator is individually/entirely controlled via an application of power will change/vary the light distribution and thus the intensity of light emitted therefrom in a spatial dependent manner. That implied and would have been obvious to one skill in the art as read from paragraph [0098] of Siebenmorgen ‘758.
Regarding the feature “homogenized” for intensity of illumination light in all area of the cross-sectional rea of the light sheet as recited in each of claims 1 and 18, such feature is not given a patentable weight because in case that there is only the phase angle deviation of the first regions is controlled then a “homogenized” result of illuminating light for the cross-sectional area will NOT be obtained. Alternation, it would have been obvious to one skill in the art to control each pixel/section of the spatial light modulator at the same time instead of individual to get a whole illumination with same intensity for each pixel/section instead of different intensity for each pixel/section.
Regarding applicant’s arguments regarding the art of Siebenmorgen ‘054, see amendment of 10/14/2025, page 15, applicant should note that the art of Siebenmorgen ‘054 is used as a secondary reference in combination with the primary reference, i.e., Siebenmorgen ‘758 because Siebenmorgen ‘054 discloses that a local change of a spatial light modulator, i.e., an area/section, is able to be variable/changed based on an application of voltage on the spatial light modulator on a particular area/section as desired by a user to meet a particular application.
Drawings
8. The replacement sheets contained figures 12-13 was received on 10/14/2025.
9. As a result of the changes to the drawings, the application now contains a total of seven sheets of figures 1-13 which includes four sheets of figures 3-6 and 9-11 as filed on 08/26/2021, two replacement sheets contained figures 1-2 and 7-8 as filed on 03/12/2025, and one replacement sheet contained figures 12-13 as filed on 10/14/2025. The mentioned total of seven sheets of figures 1-13 is now approved by the examiner.
Specification
10. The substitute specification filed on 03/12/2025 has been entered.
11. The lengthy specification which was amended by the amendment of 09/12/2025 has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
12. 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.
13. 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.
14. 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 limitations are:
a) “a control device” as recited in claim 13;
b) “optical components” as recited in claim 13;
c) “a control unit” as recited in claim 28.
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 § 112
15. 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.
16. Claims 1-4, 11-19 and 26-31 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 for the following reasons.
a) The claim is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the features thereof “wherein, for influencing an intensity … is homogenized” (lines 11-16).
The mentioned features make the claim indefinite because it is unclear from the claimed language how the intensity of the illumination light at different locations of a (the?) cross-sectional area of the light-sheet is homogenized. Applicant is respectfully invited to review the mentioned features on lines 12-14 of the claim in which the claim recites “at least the phase angle deviation impressed on the illumination light in the first regions is controlled in a spatially dependent manner” (examiner’s emphasis).
With the claimed language being provided in the claim and any feature recited in the claim is given a board interpretation then how can the phase angle deviation impressed on the illumination light of only the first regions (due to the terms “at least”) can make the intensity of the illumination in different locations of the cross-sectional area “homogenized”?
b) 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.
c) The remaining claims are dependent upon the rejected base claims and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 103
17. 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.
18. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
19. Claims 1-4, 11-19, and 26-31, as best as understood, are rejected 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) (both of record).
Siebenmorgen ‘758 discloses a light sheet microscope.
a) Regarding present claims 1, 12-15, 17-18, 27-30, the microscope as described in paragraphs [0089], [0091]-[0098], [0100], claim 11 and shown in figs 8 and 10 comprises the following features:
a1) a light source system (1, 3) for proving an illuminating light sheet;
a2) a phase mask (4, 4.1) and a control device for operating the phase mask;
a3) optical elements (5-9) for shaping the light sheet;
a4) optical elements (11-14) for guiding the light sheet into a sample (15);
a5) a microscope (19-20) for observing the sample;
a6) the controllable phase mask (4) is driven to provide a phase pattern, see paragraph [0092] and figs. 8 in which at least first regions, i.e., the regions marked as
Π
, and second regions, i.e., the regions marked as 0, are arranged alternatively and wherein the light (2) in the first regions is given a greater phase deviation (phase value) in the first regions
Π
than the second regions 0, for influence the intensity of the illumination light, see paragraph [0098].
The only feature missing from the microscope provided by Siebenmorgen ‘758 is that Siebenmorgen ‘758 does not clearly disclose that the phase deviation of the first regions is controlled in a spatial dependent manner.
However, an illumination system for use in a light sheet microscope wherein the illumination system comprises a phase mask which is controlled to provide a phase pattern wherein the phase angle deviation of a particular regions is controlled in a spatial dependent manner is known to one skill in the art as suggested by Siebenmorgen ‘054, see paragraph [0026]. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to modify the illumination system for use in a light sheet microscope provided by Siebenmorgen ‘758 by using an illumination system having a phase mask which is controlled to provide a phase pattern wherein the phase angle deviation of a particular regions is controlled in a spatial dependent manner as suggested by Siebenmorgen ‘054 to obtain a monochromatic light sheet to meet a particular application.
Regarding the feature “homogenized” for intensity of illumination light in all area of the cross-sectional rea of the light sheet as recited in each of claims 1 and 18, such feature is not given a patentable weight because in case that there is only the phase angle deviation of the first regions is controlled then a “homogenized” result of illuminating light for the cross-sectional area will NOT be obtained. Alternation, it would have been obvious to one skill in the art to control each pixel/section of the spatial light modulator at the same time instead of individual to get a whole illumination with same intensity for each pixel/section instead of different intensity for each pixel/section.
b) Regarding present claim 3, the intensity of illumination light downstream of the controllable phase mask (4) is controlled to be maintained/homogenized at different location of a cross-section are of the light sheet and the phase angle deviation of the first regions is controlled based on any desired intensity via the operation of the phase mask, see paragraph [0098].
c) Regarding present claims 4, 11, 19 and 26, the phase mask as provided by Siebenmorgen ‘054 having the first and second regions alternative arranged in a chequerboard-like manner and has a shape of a long rectangular shape and the phase angle deviation in the first regions is developed/impresses along a longer side, see Siebenmorgen ‘054 in fig. 6.
d) Regarding present claims 16 and 31, it would have been obvious to one skill in the art to modify the combined product provided by Siebenmorgen ‘758 and Siebenmorgen ‘054 by using a light source with a setting intensity for the purpose of avoiding the fluctuation in illumination distribution.
Conclusion
18. 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