DETAILED ACTION
Notice of 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 .
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.
Withdrawn Objections and Rejections
Applicant's response, filed 01/30/2026, has been fully considered.
In view of the amendment and remarks from 01/30/2026, the objection to the drawings is withdrawn. The following rejections and/or objections are either maintained or newly applied for claims 1-20. They constitute the complete set applied to the instant application. Herein, "the previous Office action" refers to the Non-Final Rejection of 11/03/2025.
Status of the Claims
Claims 1-30 are pending.
Claims 21-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected invention, as set forth in the Non-Final Office Action dated 11/3/2025.
Claims 1-20 are rejected.
Priority
This application US 17/534,166 (11/23/2021) claims no priority herein, as reflected in the filing receipt mailed on 12/08/2021. The claims to the benefit of priority are acknowledged and the effective filing date of claims 1-20 is 11/23/2021.
Claim Interpretation
Claims 1-8 12-15, 17-18 and 20 recite “weight(s)” which is being interpreted as score(s) reported as numerical values. See specification [05]
Claims 1-20 recite optical “signal(s)” which is being interpreted as light intensities corresponding to a wavelength – see specification [25] - therefore a ratio (or product) of filtered signals is being interpreted as a ratio (or product) of signal/intensities at two wavelengths.
Response to applicant's remarks in regard to Claim Interpretation
The Remarks of 01/30/2026 have been fully considered but are not persuasive for the reasons below:
Applicant asserts in pg.11 para. 3:
(MPEP §2111.01(1)) and "[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim" (MPEP §2111.01(11)). … Again, however, the specification at <]{[0005] states "each of the weights may correspond to a numerical value" and does not mention weights being "reported" as numerical values. … However, optical and/or filtered "signal(s)" is not so limited. As a non-limiting example, the specification discusses "filtered signal may comprise numerical values for each of the one or more spectral components of the optical signal. For example, the numerical values may correspond to a received optical power (e.g., irradiance, flux density, optical power, and/or spectral irradiance) …One skilled in the art would understand various filtered and/or optical signal(s) that could be generated and/or simulated, such as discussed with respect to FIG. 2B (e.g., specification as-published, <]{<]{[0038][0043].
The Examiner disagrees with the asserted arguments because the instant specification is correctly applied and supports the interpretation of the claim language. The disclosed "each of the weights may correspond to a numerical value" [0005] indeed allows the recited weights to be interpreted as numerical values under broadest reasonable interpretation consistent with the specification. Similarly, [0053] allows the interpretation of optical "signal(s)" as "light intensities corresponding to a wavelength" which is further recited as various filtered and/or optical signal(s) that could be generated and/or simulated. The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) expressly recognized that the USPTO employs the "broadest reasonable interpretation" standard:
The Patent and Trademark Office ("PTO") determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004). Indeed, the rules of the PTO require that application claims must "conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description."37 CFR 1.75(d)(1) See also In re Suitco Surface, Inc., 603 F.3d 1255, 1259, 94 USPQ2d 1640, 1643 (Fed. Cir. 2010); In re Hyatt, 21.
Claim Rejections - 35 USC § 112(b)
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.
Claims 13-20 are rejected under 35 U.S.C. 112(b)as being indefinite for failing to particularly point out and distinctly claim the subject matter the invention. Dependent claims are rejected similarly, unless otherwise noted below. Any newly recited portions are necessitated by claim amendment. The following issues cause the respective claims to be rejected under 112(b) as indefinite:
Claims 13 and 18 recite “configure/configuring a user device to receive signals filtered via the selected highest ranked optical filter pair” but there is no indication if a user device is required to be part of the system or coupled to the computer readable media so that it can be configured or if the claim merely requires transmitting information that can be used to configure a user device. For examination purposes, it is interpreted as the former. Thus, the metes and bounds of the claims are unclear. Claims 14-17 and 19-20 are similarly rejected because they depend on claims 13 and 18 and do not resolve the lack of clarity introduced.
Response to applicant's remarks in regard to Claim Rejection 35 U.S.C. ~ 112(b)
The Remarks of 01/30/2026 have been fully considered but are not persuasive for the reasons below:
Applicant asserts in pg.13 para. 3:
The Office does not suggest that a person of ordinary skill in the art would not know the meaning of the phrase "configure/configuring a user device to receive signals ... " - the Office instead asserts that there are multiple ways in which a user device could be configured (e.g., the user device may be part of a system doing the configuring, coupled to the computer readable media for configuring, receive transmitted information that can be used to configure the user device, etc.). This is a matter of breadth, and not indefiniteness (MPEP 2173.04). A person of ordinary skill would have no trouble understanding "configure/configuring a user device to receive signals filtered via the selected highest ranked optical filter pair." Accordingly, Applicant respectfully requests reconsideration and withdrawal of the rejections of present claims 13-20.prediction.
The Examiner disagrees with the asserted arguments because as recited in the claims, it is still unclear if "configure/configuring a user device to receive signals ... " requires an user device to be part of the system or coupled to the computer readable media so that it can be configured or if the claim merely requires transmitting information that can be used to configure a user device. Considering that the claims in question are a CRM (claim 13) and a system claim (claim 18), clarity is required in regards of what is required. To overcome this rejection the claims may be amended to clarify is the CRM and system claim required the physical device to be coupled or if the recited "configuring" requires only information to be used to configure a user device.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
A. Claims 1-2, 4-5, 7-9, 12-14, 17-18, and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Li (“Filter Selection for Optimizing the Spectral Sensitivity of Broadband Multispectral Cameras Based on Maximum Linear Independence” Sensors 18:1455 (2018) in view of Dandin (“Optical filtering technologies for integrated fluorescence sensors" Lab on a Chip 7(8):955-977 (2007)), as cited on the 11/03/2025 Form PTO-892. Any newly recited portions are necessitated by claim amendment. Bullet points indicate the teachings of the instant features over the prior art. Instantly claimed elements which are considered to be equivalent to the prior art teachings are described in bold for all claims.
Claim 1 recites:
generating filtered signals by
generating one or more optical signals simulating light from one or more portions of the luminescent source that are located at one or more distances from within a volume of the biological material to a surface boundary of the volume of the biological material; and
filtering, based on the list of optical filters, the one or more optical signals to generate the filtered signals;
determining, based on the filtered signals, weights associated with one or more optical filter pairs, wherein each of the one or more optical filter pairs comprises a pair of optical filters of the list of optical filters;
ranking, based on the weights, a list of the one or more optical filter pairs;
selecting a highest ranked optical filter pair from the ranked list of the one or more optical filter pairs; and
configuring a user device to receive signals filtered via the selected highest ranked optical filter pair
Claim 12 recites:
receiving, by the computing device, data indicating a second luminescent source and a second biological material; generating, based on the list of optical filters, the second luminescent source, and the second biological material, additional filtered signals; determining, based on the additional filtered signals, additional weights associated with the one or more optical filter pairs; ranking, based on the additional weights, a second list of the one or more optical filter pairs; and selecting a highest ranked optical filter pair from the ranked second list of the one or more optical filter pairs
Claim 13 recites:
a CRM storing instructions that, when executed, perform the steps described in claim 1
Claim 17 recites:
wherein the instructions, when executed, further cause: receiving, by the computing device, data indicating a second luminescent source and a second biological material; generating, based on the list of optical filters, the second luminescent source, and the second biological material, additional filtered signals; determining, based on the additional filtered signals, additional weights associated with the one or more optical filter pairs; ranking, based on the additional weights, a second list of the one or more optical filter pairs; and selecting a highest ranked optical filter pair from the ranked second list of the one or more optical filter pairs
Claim 18 recites:
a system comprising: one or more processors; and memory storing instructions that, when executed by the one or more processors, cause the system to perform the steps described in claim 1
• Li teaches a computed imaging simulation (i.e. computing device, system and CRM) (pg. 6 para. 4) to investigate the features of the most competent filter set (i.e. selecting a highest ranked optical filter pair) (pg. 1 para. 1) and to optimize the spectral sensitivity of multispectral camera (pg. 1 para. 3); wherein a list is reported for the 20% best-performed filter sets (i.e. a list of the one or more optical filter pairs and generated filtered signals) (pg. 8 Table 1); wherein filter sets comprised combinations of two filters (i.e. optical filter pair) (pg. 3 para. 6); wherein a method is used to decide explicitly which filter set is more optimal by a score (i.e. weights associated with one or more optical filter pairs) ranking (i.e. ranking, based on the weights) (pg. 8 para. 1); wherein the method described serves as a criterion for designing the spectral sensitivity of spectral filter array sensors (i.e. configuring a user device to receive signals filtered via the selected highest ranked optical filter pair) (pg. 14 para. 4). Li also teaches a method designed for evaluating daylight spectra recovery by a simulated annealing algorithm (i.e. simulating light from one or more portions of the luminescent source) (pg. 6 para. 6).
• Li does not teach "data indicating a luminescent source and a biological material" and "luminescent source that are located at one or more distances from within a volume of the biological material to a surface boundary of the volume of the biological material." However, Dandin teaches optical filtering technologies for integrated fluorescence sensors to be used in biological experiments (i.e. data indicating a luminescent source) (pg. 955 col. 1 para. 1) via the application of computational algorithms (i.e. computing device, system and CRM) (pg. 969 col. 2 para. 2); wherein the quantum yield of a fluorophore varies, depending on whether it is dissolved in solution, immobilized on a surface, or conjugated to a biological specimen (i.e. biological material which inherently presents a volume) (pg. 973 col. 2 para. 2); wherein quantum yield is the ratio of the emitted to absorbed photons (i.e. optical signals) (pg. 956 col. 1 para. 3); wherein there is a distance between each of the absorption peak for the fluorophore (i.e. signal at the surface boundary of the biological material) and the emission spectrum peak (i.e. signal from the luminescence source – which in this case is emitted fluorescence light) (pg. 956 col. 1 para. 3); wherein the wavelength filter must reject the excitation light and transmit the emitted fluorescent light (pg. 956 Fig. 1).
• Regarding claims 12 and 17, one of ordinary skill in the art would be motivated to perform the steps described in claim 1 for a second luminescent source and a second biological material generating additional filtered signals based on additional weights to filter optical signal and select a highest ranked optical filter pair from the ranked second list of the one or more optical filter pairs. The recitation in claim simply requires steps to be repeated with no additional limitation. One would be motivated to repeat the described steps for routine optimization reasons for determination of the optimum or workable ranges. MPEP 2144.05 II states - The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding.
Claim 2 recites:
wherein each of the weights correspond to a numerical value, and wherein the highest ranked optical filter pair corresponds to a largest numerical value of the determined weights
Claim 14 recites:
wherein each of the weights correspond to a numerical value, and wherein the highest ranked optical filter pair corresponds to a largest numerical value of the determined weights
• Li teaches that the score ranking method is designed like this: let the first filter series in Table 1 have the highest score of 9, the second have 8 and so on, then we can get the cumulative scores of the filter sets (pg. 8 para. 1).
Claim 4 recites:
wherein determining a weight associated with an optical filter pair comprises determining a ratio of a first signal of the filtered signals associated with a first optical filter and a second signal of the filtered signals associated with a second optical filter
• Li does not teach the recitation above. However, Dandin teaches optical filtering technologies for integrated fluorescence sensors to be used in biological experiments (pg. 955 col. 1 para. 1); wherein ratiometric measurements rely on the ratio of intensities at the two wavelengths (i.e. the ratio between two optical signals) (pg. 960 col. 1 para. 3).
Claim 5 recites:
wherein determining a weight associated with an optical filter pair comprises comparing a first signal of the filtered signals associated with a first optical filter with a pre-determined threshold value and comparing a second signal of the filtered signals associated with a second optical filter with the pre-determined threshold value
Claim 7 recites:
wherein determining a weight associated with an optical filter pair comprises determining a linear relationship between a first signal of the filtered signals associated with a first optical filter and a second signal of the filtered signals associated with a second optical filter
• Li teaches that the best filter set (i.e. filter pair) is selected in two steps: the first step is to select a subset of the filter sets with smaller condition number (i.e. pre-determined threshold value) from the entire filter sets (i.e. comparing a second signal of the filtered signals associated with a second optical filter with the pre-determined threshold value) forming a list of sequential numbers of the condition number sorted ascendingly from 45 corresponding condition numbers for the best-performing filter sets (i.e. linear relationship) (pg. 14 para. 2).
Claim 8 recites:
wherein determining a weight associated with an optical filter pair comprises determining a rank of a matrix comprising a first column and a second column, wherein the first column comprises a first signal of the filtered signals associated with a first optical filter and the second column comprises a second signal of the filtered signals associated with a second optical filter
• Li teaches a matrix of spectral distribution of filter transmittances with m spectral sensing channels, each column of which is a transmittance vector of a corresponding filter corresponding with n wavelength sample (i.e. each column representing signals of the filtered signals associated with a filter) (pg. 3 para. 1).
Claim 9 recites:
wherein the generating the one or more optical signals comprises simulating a plurality of optical signals by computing, for a plurality of distances and based on optical properties of the biological material and of the luminescent source, the plurality of optical signals, wherein each of the plurality of distances corresponds to a distance between a portion of the luminescent source and the surface boundary of the biological material
• Li does not teach the recitation above. However, Dandin teaches the distance between each of the absorption peak for the fluorophore (i.e. signal at the surface boundary of the biological material) and the emission spectrum peak (i.e. optical signal from the luminescence source – which in this case is emitted fluorescence light) (pg. 956 col. 1 para. 3); wherein the wavelength filter must reject the excitation light and transmit the emitted fluorescent light (i.e. based on optical properties of the biological material and of the luminescent source) (pg. 956 Fig. 1).
• Regarding the recited "plurality of distances" and "plurality of optical signals", one of ordinary skill in the art would be motivated to try a method that comprises plurality of distances between a portion of the luminescent source and the surface boundary of the biological material to arrive at the plurality of optical signals for routine optimization reasons for determination of the optimum or workable ranges. MPEP 2144.05 II states - The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding.
Claim 20 recites:
wherein an optical filter pair comprises a first optical filter and a second optical filter, and wherein determining a weight of the optical filter pair comprises, for a first signal and a second signal, one or more of: determining a ratio associated with the first signal and the second signal; comparing the first signal with a pre-determined threshold value and the second signal with the pre-determined threshold value; determining a product associated with the first signal and the second signal; determining a linear relationship between the first signal and the second signal; or determining a rank of a matrix comprising numerical values associated with the first signal and the second signal
• Li teaches an computed imaging simulation to investigate (pg. 6 para. 4) the features of the most competent filter set (i.e. first and second optical filters) (pg. 1 para. 1); wherein a method is used to decide explicitly which filter set is more optimal by a score ranking (i.e. determining a weight of the optical filter pair) (pg. 8 para. 1); wherein the best filter set is selected in two steps: the first step is to select a subset of the filter sets with smaller condition number from the entire filter sets (i.e. pre-determined threshold value) forming a list of sequential numbers of the condition number sorted ascendingly from 45 corresponding condition numbers for the best-performing filter sets (pg. 14 para. 2); wherein a matrix of spectral distribution of filter transmittances with m spectral sensing channels, each column of which is a transmittance vector of a corresponding filter corresponding with n wavelength sample (i.e. each column representing signals of the filtered signals associated with a filter) (pg. 3 para. 1).
Rationale for combining (MPEP §2142-2143)
Regarding claims 1-2, 4-5, 7-9, 12-14, 17-18, and 20, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine, in the course of routine experimentation and with a reasonable expectation of success, the methods of Li in view of Dandin because all references disclose methods for investigating optical filtering techniques. The motivation would have been to incorporate a set of performance metrics are proposed for evaluating and reporting spectral discrimination characteristics of integrated devices (pg. 955 para. 1 Dandin).
Therefore it would have been obvious to one of ordinary skill in the art to substitute optical filtering method of Li to the methods by Dandin because such a substitution is no more than the simple substitution of one known element for another. One of ordinary skill in the art would be able to motivated to combine the teachings in these references with a reasonable expectation of success since the described teachings pertain to methods for investigating optical filtering techniques.
B. Claims 3, 6, and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Li and Dandin as applied to claims 1 and 13 above further in view on Kibria (“All Optical Signal-Processing Techniques Utilizing Four Wave Mixing” Photonics 2(1):200-213 (2015)), as cited on the 11/03/2025 Form PTO-892. Any newly recited portions are necessitated by claim amendment. Bullet points indicate the teachings of the instant features over the prior art. Instantly claimed elements which are considered to be equivalent to the prior art teachings are described in bold for all claims.
Claim 3 recites:
wherein an optical filter pair comprises a first optical filter and a second optical filter, and wherein determining a weight associated with the optical filter pair comprises determining a correlation between the first and second optical filters
Claim 6 recites:
wherein determining a weight associated with an optical filter pair comprises determining a product of a first signal of the filtered signals associated with a first optical filter and a second signal of the filtered signals associated with a second optical filter
Claim 15 recites:
wherein an optical filter pair comprises a first optical filter and a second optical filter, and wherein determining a weight associated with the optical filter pair comprises determining a correlation between the first and second optical filters
• Li does not teach the recitations above. However, Kibria teaches four wave mixing based optical signal-processing techniques (i.e. filtering signals) (pg. 200 para. 1); wherein two optical filters are used to filter signals (pg. 207 para. 1 and Fig. 7); wherein Mach-Zehnder modulator is used to perform the multiplication required for the correlation function of the optical signals (i.e. determining a correlation between the signals” and “determining a product of filtered signal) (pg. 200 para. 2).
Rationale for combining (MPEP §2142-2143)
Regarding claims 3, 6, and 15, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine, in the course of routine experimentation and with a reasonable expectation of success, the methods of Li and Dandin in view of Kibria because all references disclose methods for investigating optical filtering techniques. The motivation would have been to realize real time signal processing (pg. 200 para. 2 Kibria).
Therefore it would have been obvious to one of ordinary skill in the art to substitute optical filtering method of Li and Dandin to the methods by Kibria because such a substitution is no more than the simple substitution of one known element for another. One of ordinary skill in the art would be able to motivated to combine the teachings in these references with a reasonable expectation of success since the described teachings pertain to methods for investigating optical filtering techniques.
C. Claims 10-11, 16, and 19 are rejected under 35 U.S.C. 103(a) as being unpatentable over Li and Dandin as applied to claims 1, 13, and 18 above further in view of Pisanello (“The Three-Dimensional Signal Collection Field for Fiber Photometry in Brain Tissue” Frontiers in neuroscience 13(82) (2019)), as cited on the 11/03/2025 Form PTO-892. Any newly recited portions are necessitated by claim amendment. Bullet points indicate the teachings of the instant features over the prior art. Instantly claimed elements which are considered to be equivalent to the prior art teachings are described in bold for all claims.
Claim 10 recites:
wherein generating a filtered signal comprises generating, by the computing device and based on a source model of a sub-volume of the luminescent source within the volume of the biological material, the filtered signal
Claim 16 recites:
wherein generating a filtered signal comprises generating, by the computing device and based on a source model of a sub-volume of the luminescent source within the volume of the biological material, the filtered signal
• Li teaches an computed imaging simulation (i.e. computing device, system and CRM) (pg. 6 para. 4) to investigate the features of the most competent filter set (i.e. selecting a highest ranked optical filter pair) (pg. 1 para. 1) and to optimize the spectral sensitivity of multispectral camera (pg. 1 para. 3); wherein a list is reported for the 20% best-performed filter sets (i.e. a list of the one or more optical filter pairs and generated filtered signals) (pg. 8 Table 1); wherein filter sets comprised combinations of two filters (i.e. optical filter pair) (pg. 3 para. 6); wherein a method is used to decide explicitly which filter set is more optimal by a score (i.e. weights associated with one or more optical filter pairs) ranking (i.e. ranking, based on the weights) (pg. 8 para. 1).
• Li does not teach a "source model of a sub-volume of the luminescent source within the volume of the biological material." However, Pisanello teaches a fs-pulsed near-infrared laser (920 nm) was used to generate a fluorescent voxel (i.e. luminescent source) (pg. 4 col. 1para. 4) to obtain a volumetric scan of brain tissue (pg. 4 col. 2 para. 1); wherein the volumes enclosed by these surfaces reflect those from which a given fraction of the collected photons arise and hence determine the effective volume from which functional signals can be detected (i.e. reading on the measurement of signals from sub-volumes given the use of the fractioned signals/photons to determine at the effective volume) (pg. 4 col. 2 para. 3).
Claim 11 recites:
generating data simulating a volume of the biological material comprising a sub-volume of the luminescent source, wherein the volume comprises a plurality of voxels and the sub-volume comprises one or more voxels, and wherein each of the one or more voxels is assigned a numerical value corresponding to a radiated intensity of the luminescent source from within that voxel
Claim 19 recites:
generating data simulating a volume of the biological material comprising a sub-volume of the luminescent source, wherein the volume comprises a plurality of voxels and the sub-volume comprises one or more voxels, and wherein each of the one or more voxels is assigned a numerical value corresponding to a radiated intensity of the luminescent source from within that voxel
• Li does not teach the recitation above. However, Pisanello teaches a fs-pulsed near-infrared laser (920 nm) was used to generate a fluorescent voxel (i.e. luminescent source) (pg. 4 col. 1para. 4) to obtain a volumetric scan (pg. 4 col. 2 para. 1); wherein the values describe the relative contribution of signal arising from each voxel (i.e. numerical value assigned to each voxel) and thus determine the spatial distribution of the sources of signal collected during a fiber photometry recording (i.e. corresponding to radiated intensity) (pg. 8 col. 2 para. 3); wherein the volumes enclosed by these surfaces reflect those from which a given fraction of the collected photons arise and hence determine the effective volume from which functional signals can be detected (i.e. reading on the measurement of signals from sub-volumes given the use of the fractioned signals/photons to determine at the effective volume) (pg. 4 col. 2 para. 3).
Rationale for combining (MPEP §2142-2143)
Regarding claims 10-11, 16, and 19, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine, in the course of routine experimentation and with a reasonable expectation of success, the methods of Li and Dandin in view of Pisanello because all references disclose methods for investigating optical techniques. The motivation would have been to obtain a more precise interpretation of measurements in terms of sampled volume (pg. 1 para. 1 Pisanello).
Therefore it would have been obvious to one of ordinary skill in the art to substitute optical method of Li and Dandin to the methods by Pisanello because such a substitution is no more than the simple substitution of one known element for another. One of ordinary skill in the art would be able to motivated to combine the teachings in these references with a reasonable expectation of success since the described teachings pertain to methods for investigating optical techniques.
Response to applicant's remarks in regard to Claim Rejection 35 U.S.C. ~ 103
The Remarks of 01/30/2026 have been fully considered but are not persuasive for the reasons below:
Applicant asserts in pg.14 para. 1:
However, it would not have been obvious to do so. Li relates to imaging simulations for selecting "the most competent filter set" for "optimizing the spectral sensitivity of broadband multispectral imaging sensors." Li, Abstract. Dandin is a review of "miniaturizing fluorescence sensing ... for micro-total-analysis systems" …. The imaging discussed in Dandin for selective sensing of emissions from specific fluorophores is not analogous to Li's multi-spectral broadband imaging. One skilled in the art would not combine Li and Dandin at all, let alone as proposed in the Office Action. Further, even if one skilled in the art were to combine Li with Dandin, which Applicant does not concede, no combination of Li and Dandin would disclose or suggest at least "generating one or more optical signals simulating light from one or more portions of the luminescent source…" of amended claim 1. …. Moreover, Dandin's spectral distance between an absorption peak and emission peak does not disclose or suggest at least "one or more distances from within a volume of the biological material to a surface boundary of the volume of the biological material" of amended claim 1… Li and Dandin also fail to disclose or suggest "filtering, based on the list of optical filters, the one or more optical signals to generate the filtered signals" of claim 1. Therefore, amended claim 1 is allowable over Li and Dandin.
The Examiner disagrees with the asserted arguments because the prima facie case of obviousness has been established. MPEP 2141.III for "RATIONALES TO SUPPORT REJECTIONS UNDER 35 U.S.C. 103"; wherein "(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. In this instant case, teachings by Li, Dandin, Kibria, and Pisanello allows one of ordinary skill to arrive at the claimed invention. The fact that Li applies the described method to "miniaturizing fluorescence sensing ... for micro-total-analysis systems" does not negate that all the details of the method are being taught. The methods by Li and Dandin are analogous because both describe the investigation of optical filtering techniques involving a luminescent source and a biological material. Furthermore, the motivation to combine the methods by Li, Dandin, Kibria, and Pisanello would have been to: incorporate a set of performance metrics are proposed for evaluating and reporting spectral discrimination characteristics of integrated devices (pg. 955 para. 1 Dandin); to incorporate real time signal processing (pg. 200 para. 2 Kibria); and to obtain a more precise interpretation of measurements in terms of sampled volume (pg. 1 para. 1 Pisanello). Due to the described reasons above, it is interpreted that the claims do not patentably distinguish the claimed invention from the teachings found in the prior art. Furthermore, in this instant application, the amendments support existing claim rejections, in which the recited limitations are all addressed, see Claim Rejections above.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANCINI A FONSECA LOPEZ whose telephone number is (571)270-0899. The examiner can normally be reached Monday - Friday 8AM - 5PM ET.
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, Olivia Wise can be reached at (571) 272-2249. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/F.F.L./Examiner, Art Unit 1685
/OLIVIA M. WISE/ Supervisory Patent Examiner, Art Unit 1685