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 Amendment filed 07/09/2025 has been entered. Claims 1-2 and 4-12 are pending in the application. Claims 9-12 are withdrawn. Claims 1-2 and 4-8 are being examined herein.
Status of Objections and Rejections
All rejections of claim 3 are obviated by Applicant’s cancellation.
The rejections of claims 1-2 and 4-8 under 35 U.S.C. 103 are being withdrawn in view of Applicant’s amendment.
New grounds for rejection under 35 U.S.C. 103 are necessitated by Applicant’s amendments.
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.
Claims 1, 4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US 20190271651 A1, the US equivalent of TW 201939018 provided in Applicant’s IDS of 12/14/2022) in view of Wu (US 20130088708 A1) and further in view of Matsuzaki (JP 2016009163 A).
Regarding claim 1, Ma teaches a convective polymerase chain reaction apparatus, comprising:
a base (housing)(para. 0055), suitable for carrying a tube to be tested (one of the plurality of wells 10)(interpreted as intended use. Paras. 0048, 0055, the housing contains support 6 which is capable of holding a plurality of wells 10 with fluorescent mixture for PCR reactions);
a heating element (61), installed on the base to heat the tube to be tested through the base (para. 0048);
a light combining element (color combination prism 4) (see annotated figure below), comprising a first face (the top-left lateral face of color combination prism 4), a second face (the top-right lateral face of color combination prism 4), a third face (the bottom-right lateral face of color combination prism 4), and a fourth face (the bottom-left lateral face of color combination prism 4) connected to one another (in contact), wherein the first face and the second face define a light exit area (top prism), the second face and the third face define a first light incident area (right prism), the third face and the fourth face define a second light incident area (bottom prism), the first face and the fourth face define a third light incident area (left prism);
PNG
media_image1.png
710
1264
media_image1.png
Greyscale
Figure A. Annotated Fig. 2 of Ma
at least two light emitting elements (20, 21, 22); and
at least two light sensors (transducers 83), wherein a number of the at least two light sensors corresponds to a number of the at least two light emitting elements (Fig. 1 and para. 0052-0054, three groups of transducers, each group correspond to each light source), the light emitting elements are at least two of a first light emitting element (22), a second light emitting element (21), and a third light emitting element (20), the first light emitting element is suitable for providing a first monochromatic light (green light spectrum 220) toward the first light incident area (Figs 1 and 2, right prism), the second light emitting element is suitable for providing a second monochromatic light (blue light spectrum 210) toward the second light incident area (bottom prism), the third light emitting element is suitable for providing a third monochromatic light (red light spectrum 200) toward the third light incident area (left prism), the first face is suitable for reflecting the first monochromatic light (green light spectrum 220 )(Para. 0041 anti-diagonal surface is coated to reflect green light spectrum 220 as shown in Fig. 2) and allowing the second monochromatic light (blue light spectrum 210) and the third monochromatic light (red light spectrum 200) to pass through (Fig. 2, blue light spectrum 210 and red light spectrum 200 pass through), the second face is suitable for reflecting the third monochromatic light (red light spectrum 200) (Fig. 2. Para. 0042 diagonal surface is coated to reflect red light spectrum 200) and allowing the first monochromatic light (green light spectrum 220) and the second monochromatic light (blue light spectrum 210) to pass through (Fig 2), the third face is suitable for reflecting the first monochromatic light (green light spectrum 220)(Para. 0041 anti-diagonal surface is coated to reflect green light spectrum 220 as shown in Fig. 2) and allowing the second monochromatic light (blue light spectrum 210) to pass through (Fig. 2), the fourth face is suitable for reflecting the third monochromatic light (red light spectrum 200) and allowing the second monochromatic light (blue light spectrum 210) to pass through (Fig. 2), at least two of the first monochromatic light, the second monochromatic light, and the third monochromatic light enter the light exit area (top prism) (see annotated figure above or Fig. 2) and exit toward the base to irradiate the tube to be tested (Fig. 1); and at least two of a first light sensor, a second light sensor, and a third light sensor are installed on the base (para. 0055, transducers 83 are part of image unit 8, which is installed in the housing), wherein the first light sensor is suitable for receiving a first excited light generated by exciting a substance in the tube to be tested with the first monochromatic light, the second light sensor is suitable for receiving a second excited light generated by exciting the substance in the tube to be tested with the second monochromatic light, the third light sensor is suitable for receiving a third excited light generated by exciting the substance in the tube to be tested with the third monochromatic light (Fig. 1 and para. 0051-0054, three groups of transducers, each group corresponds to the fluorescence signals generated by each light source); and
a condenser unit (beam shaping module 5), configured between the light exit area of the light combining element and the base (Fig. 1, para. 0046), is suitable for focusing at least two of the first monochromatic light, the second monochromatic light, and the third monochromatic light onto the tube to be tested (one of the plurality of wells 10)(para. 0046), wherein the focus position is on a long axis of the tube to be tested (para. 0046, there is a focus position on the one of the plurality of wells 10. Since a long axis goes up and down a tube, any position on the tube lies on a long axis. Therefore, the focus position is on a long axis of one of the plurality of wells 10).
Ma teaches that the light combining element is a X-cube (para. 0040) comprises of faces instead of plates; therefore, Ma fails to teach that the light combining element comprising a first plate portion, a second plate portion, a third plate portion, and a fourth plate portion. While Ma teaches the condenser unit is suitable focusing on a focus position on a long axis of the tube to be tested, Ma fails to specifically teach the condenser unit is suitable for adjusting a focus position on a long axis of the tube to be tested.
However, Wu teaches an apparatus (Figs. 1 and 2) that can detect a fluorescent object (para. 0027). Wu further teaches the apparatus comprises a beam combiner 240 that can be a cube or a plate-type (para. 0029).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the X-cube taught by Ma with a plate-type beam combiner taught by Wu to yield a light combining element comprises of plate portions because one of ordinary skill in the art would accordingly have recognized the light combining element whether in the form of a cube or a plate-type would have resulted in the predictable result of providing a structure that can combine light beams for fluorescent detection (Wu, para. 0029).
The teachings of Ma as modified by Wu would yield a light combining element a light combining element, comprising a first plate portion, a second plate portion, a third plate portion, and a fourth plate portion connected to one another.
In addition, Matsuzaki teaches on an apparatus that focuses light for the purpose of specimen analysis based on optical fluorescent techniques (paras. 0002, 0030, 0037). More specifically, Matsuzaki teaches an imaging microscope (Fig. 2) that comprises condenser lens 224 that focuses emitted light and form an image of a sample specimen. Matsuzaki further teaches the imaging microscope comprises further condenser holder 225 and support 221. Matsuzaki teaches condenser holder 225 holds condenser lens 224, and condenser holder 225 moved up and down along support 221, adjusting a focus position, to focus the condenser lens 224 (Fig. 2, para. 0030).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the condenser unit taught by Ma with a condenser lens, a condenser holder and a support taught by Matsuzaki because one of ordinary skill in the art would accordingly have recognized the substitution would have resulted in the predictable result of providing a condenser unit capable of focusing emitted light.
The teachings of modified Ma as modified by Matsuzaki would yield a condenser unit suitable for adjusting a focus position on a long axis of the tube to be tested.
Regarding claim 4, modified Ma teaches all of the elements of the current invention as stated above with respect to claim 1. Modified Ma further teaches the condenser unit comprises a lens barrel (Matsuzaki, condenser holder 225) and a condenser lens (Matsuzaki, condenser lens 224), and the condenser lens is movably configured in the lens barrel (Matsuzaki, para. 00030 and Fig. 2, condenser lens 224 in condenser holder 225 can move up and down).
Regarding claim 6, modified Ma teaches all of the elements of the current invention as stated above with respect to claim 1, Ma further teaches the convective polymerase chain reaction apparatus according to claim 1, further comprising at least two filter elements (82), a number of the at least two filter elements is set corresponding to the number of the at least two light sensors (83) (Fig. 1, para. 0054), the filter elements are at least two of a first filter element, a second filter element, and a third filter element, wherein the first filter element is configured between the first light sensor and the base, the second filter element is configured between the second light sensor and the base, the third filter element is configured between the third light sensor and the base (Fig. 1, para. 0054).
Regarding claim 7, modified Ma teaches all of the elements of the current invention as stated above with respect to claim 1. Ma further teaches the convective polymerase chain reaction apparatus according to claim 1, wherein the base has a plurality of elongated through holes (each through hole is formed with a pair of apertures 62 - an aperture 62 at the front and the corresponding aperture 62 at the rear) (Fig. 6 and para. 0048), long axes of the elongated through holes are perpendicular to a long axis of the tube to be tested carried in the base (Fig. 6, para. 0048) and are respectively and correspondingly communicated with the first light sensor, the second light sensor, and the third light sensor (Fig. 6 and para. 0048).
Regarding claim 8, modified Ma teaches all of the elements of the current invention as stated above with respect to claim 1. Ma further teaches the convective polymerase chain reaction apparatus according to claim 1, wherein each of the light emitting elements (20, 21, 22) comprises a light emitting diode (para. 0037) and a filter (30, 31, 32), the filter is configured between the light emitting diode and the light combining element (Fig. 1).
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US 20190271651 A1, the US equivalent of TW 201939018 provided in applicant’s IDS of 12/14/2022) in view of Wu (US 20130088708 A1) further in view of Matsuzaki (JP 2016009163 A) as applied to claim 1 above, and further in view of Tsai (TW 201022822 A) (Provided in applicant’s IDS of 12/14/2022).
Regarding claim 2, modified Ma teaches all of the elements of the current invention as stated above with respect to claim 1. Modified Ma discloses that the light combining element that comprises a first plate portion, a second plate portion, a third plate portion, and a fourth plate portion combines three light sources into one (Ma, Figs 1 and 2, paras. 0040 and 0041). Modified Ma further teaches the first plate portion, the second plate portion, the third plate portion, and the fourth plate portion form an X-shaped structure (Fig. 3).
Modified Ma fails to explicitly disclose the first plate portion, the second plate portion, the third plate portion, and the fourth plate portion are each connected to other three through a surface.
However, Tsai also teaches a light combining module (500) that combines three light sources (images beams R’, G’, B’) into one (projection beam I)(Fig. 3, para. 0031). Tsai further teaches the light combining module 500 also has four filter portions (plate portions) formed by two intersecting filters, a first filter 510 and a second filter 520 (para. 0028) (Figs. 3 and 4), and the filter portions are connected through plug-in structures 540 of substrate 550 (a surface) (para. 0029).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted modified Ma with the light combining module comprising two intersecting filters connected through a substrate taught by Tsai because one of ordinary skill in the art would accordingly have recognized the substitution would have resulted in the predictable result of providing a light combining module capable of combining three light sources into one (Tsai, Fig. 3 and para. 0031).
The teachings of modified Ma as modified by Tsai would yield the first plate portion, the second plate portion, the third plate portion, and the fourth plate portion are each connected to other three through a surface to form an X-shaped structure.
Regarding claim 5, modified Ma teaches all of the elements of the current invention as stated above with respect to claim 1. Ma discloses that the light combining element that comprises a first plate portion, a second plate portion, a third plate portion, and a fourth plate portion combines three light sources into one (Ma, Figs 1 and 2, paras. 0040 and 0041).
Modified Ma fails to teach the light combining element further comprises two fixing seats, the first plate portion, the second plate portion, the third plate portion, and the fourth plate portion are fixed between the fixing seats.
However, Tsai teaches a light combining module (500) that combines three image beams R’, G’, B’ (light sources) into one projection beam I (Fig. 3, para. 0031). Tsai further teaches the light combining module 500 also has four filter portions (plate portions) formed by two intersecting filters, a first filter 510 and a second filter 320 (para. 0028) (Figs. 3 and 4), and the filter portions are connected through plug-in structures 540 (fixing seats) of substrate 550 (Fig. 4, para. 0029).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted modified Ma with the light combining module comprising two intersecting filters connected through the plug-in structures of the substrate taught by Tsai because one of ordinary skill in the art would accordingly have recognized the substitution would have resulted in the predictable result of providing a light combining module capable of combining three light sources into one (Tsai, Fig. 3 and para. 0031).
The teachings of modified Ma as modified by Tsai would yield the light combining element further comprises two fixing seats, the first plate portion, the second plate portion, the third plate portion, and the fourth plate portion are fixed between the fixing seats.
Response to Arguments
Applicant's arguments, page 7-9, filed 07/09/2025, with respect to the rejections of claims 1-2 and 4-8 under 35 U.S.C. § 103 have been fully considered but they are not persuasive.
In the argument presented on p. 7-8 regarding to the amended claim 1, the Applicant argues that the combination of Ma and Matsuzaki cannot arrive at the same technical features of the amended claim 1. In particular, the Applicant argues that Matsuzaki fails to teach placing substance within the tube to be tested and fails to teach adjustment of focusing position in relation to the long axis of the tube. Furthermore, the Applicant argues that the lack of motivation for one of ordinary skills in the art to apply the technique taught by Matsuzaki in the PCR apparatus disclosed by Ma.
The examiner respectfully disagrees. In the base reference, Ma teaches a condenser unit (beam shaping module 5) … suitable for focusing at least two of the first monochromatic light, the second monochromatic light, and the third monochromatic light onto the tube to be tested (para. 0046) as stated in pages 9-10 of the Office Action mailed 04/11/2025. Therefore, Matsuzaki is not relied upon for the teaching of focusing light on the tube to be tested. The deficiency of Ma’s teaching is Ma does not teach the condenser unit is suitable for adjusting a focus position, which is supplemented by Matsuzaki’s teaching on the technique of adjust a focus position through movement of condenser lens in an condenser holder. Therefore, this argument is unpersuasive.
In regards to Matsuzaki (or the combination of Ma and Matsuzaki) fails to teach adjustment of focusing position in relation to the long axis of the tube, the limitation “suitable for adjusting a focus position on a long axis of the tube to be tested” requires only the focus position to be on a long axis of the tube to be tested. The limitation does not require the adjustment to be made along a long axis of the tube to be tested. It appears the Applicant’s intention is not commensurate of what is claimed. Since a long axis going up and down a tube, any position on tube lies on a long axis. Therefore, Ma in view of Matsuzaki teaches that limitation. Therefore, this argument is unpersuasive.
In response to applicant's argument that Matsuzaki is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
In this case, both Ma and Matsuzaki solving the problem of focusing light for the purpose of specimen analysis based on optical fluorescent techniques. Therefore, one of ordinary skill in the art would have been motivated to apply the light focusing technique taught by Matsuzaki in the apparatus disclosed by Ma. Therefore, this argument unpersuasive.
In view of above, Ma in view of Matsuzaki does arrive at the same technical features of the amended claim 1. Therefore, amended claim 1 is unpatentable over the cited references.
In the argument presented on p. 9, the Applicant's argues that dependent claims 2 and 4-8 are patentable based on their dependence on claim 1, which the Applicant alleged to be patentable. Since claim 1 is unpatentable as discussed above, claims 2 and 4-8 are also unpatentable. Therefore, this argument is unpersuasive.
Conclusion
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 MAY CHIU whose telephone number is (571)272-1054. The examiner can normally be reached 8:30am - 6:00pm.
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, Maris Kessel can be reached at 571-270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.L.C./Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758