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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/20/2022 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant's election with traverse of group I, claims 1-13 in the reply filed on 01/15/2026 is acknowledged. The traversal is on the ground(s) that a search of all of the claims would not impose a serious burden on the examiner. This is not found persuasive because such allegations relied on the unsupported assumption that the search and the examination of all the inventions would be coextensive. Further, while there may be some overlap in the searches of the four inventions, there is not reason to believe that the searches would be identical. Therefore, based on the additional work involved in searching and examining four distinct inventions together, restriction of the distinct inventions is clearly proper. Furthermore, the examination of any intended use limitation and/or functional language as recited in the apparatus claims of inventions I and II would yield a different examination of the same limitation in that of the method claims invention III as it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Additionally, the search for processor-executable instructions requires a different search strategy than the controlling system and/or examination system as the processor-executable instructions requires a processor/computer.
Claims 14-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/15/2026.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
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.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1, 7, 12 and 13 the phrase “predefined” renders the claim indefinite because the scope of the claim can not be determined. See MPEP § 2173.05(c).
Claims 2-6 and 8-11 depend on claim 1 and are therefore rejected for the same reason.
Claim 6 recites the limitation “an operation speed of a fan of the microscope…wherein the fan is configured to ventilate the imaging optics chamber” in the claim. While the fan can be used to ventilate the imaging optics chamber, a fan of the microscope does not appear to be positively recited and thus claimed as part of the apparatus. Therefore, it is unclear if the claim actually recites the inclusion of the fan of the microscope.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-4, 7-8 and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Honmou et al. (hereinafter Honmou) EP 3819369 cited in the IDS filed 07/20/2022.
Regarding claim 1, Honmou discloses a microscope (microscope 12), an incubation environment conditioning unit (incubator 11) connected to the microscope as shown in Fig. 1, and a user interface (The operation device 16 is a keyboard and a mouse, for example. A user can operate the operation device 16 to set processing contents to the image processing portion 45 and control the movement of the microscope 12. [0014]),
the microscope comprising: an illumination optics (illumination light beam source 50, illumination optical system 51,), a microscope stage (frame plate 30), an imaging optics (observation optical system 52 and image pickup device )[0022-0024], a sample chamber (culture chamber 25) configured to receive the sample (observation target 28), a microscope interface (partition wall 23) configured for connection of the incubation environment conditioning unit to the sample chamber [0016-0017], and an imaging optics chamber (machine chamber 26) separated from the sample chamber and enclosing the imaging optics as shown in Fig. 1,
wherein the examination system provides an incubation mode in which the sample chamber is incubated by supplying an incubation atmosphere generated by the incubation environment conditioning unit via the atmosphere control mechanism [0020],
the controlling system (computer for culture 36 and operation device 37) being configured to:
receive a target setpoint of at least one examination parameter upon user input via the user interface;
select, based on the received at least one target setpoint, predefined adjustment setpoints for at least one incubation environment parameter of the incubation mode and for at least one microscope parameter; and
operate the incubation environment conditioning unit and the microscope based on the selected adjustment setpoints (The operation device 37 is a device capable of specifying target values of the temperature and the humidity of the culture chamber 25. The display device 38 can display the temperature detected by the temperature sensor 33, the humidity detected by the humidity sensor 35, and the target values specified by the operation device 37. The computer for culture 36 controls the operation of the heating device 32 and the operation of the humidifying device 34 such that detection values of the temperature and the humidity obtained by the temperature sensor 33 and the humidity sensor 35 are in agreement with the specified target values of the temperature and the humidity. Thus, the atmosphere of the culture chamber 25 is controlled. 0020]). See [0013-0048]; Figs. 2a, 2b. and 3.
The incubation environment conditioning unit has been interpreted as a processor as disclosed in applicant’s specification [0038].
Regarding claim 3, Honmou discloses wherein the at least one incubation environment parameter comprises at least one of a temperature in the sample chamber, or a humidity in the sample chamber [0020].
Regarding claim 4, the observation device of Honmou is structurally the same as the instantly claimed. Thus, in the absence of further positively recited structure the device of Honmou is capable of automatedly providing a value for the humidity in the sample chamber based on the temperature in the sample chamber in view of at least [0020].
Regarding claim 7, Honmou discloses wherein the at least one incubation environment parameter comprises the humidity in the sample chamber, and wherein operating the incubation environment conditioning unit and the microscope based on the selected adjustment setpoints comprises [0020]. The observation device of Honmou is structurally the same as the instantly claimed. Thus, in the absence of further positively recited structure the device of Honmou is capable of determining whether at least one of the temperature in the sample chamber has reached a respective predefined value; and starting operating the incubation environment conditioning unit to control the humidity in the sample chamber after the respective temperatures have reached predetermined values, wherein the respective predefined value is a value defined by the respective target setpoint or selected adjustment setpoint, or a value within a range around the respective target setpoint or selected adjustment setpoint in view of [0020].
It is noted that apparatus claims cover what a device is, not what a device does or how it is to be used. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP § 2114.
Regarding claim 8, The observation device of Honmou is structurally the same as the instantly claimed. Thus, in the absence of further positively recited structure the device of Honmou is capable of determine when at least one of: the at least one examination parameter, the at least one incubation environment parameter, and the at least one microscope parameter has reached a value within a predetermined range around the respective selected adjustment setpoint or has reached the value of the selected adjustment setpoint; and indicate to the user, via the user interface, that the examination system is ready for examination in view of [0020].
It is noted that apparatus claims cover what a device is, not what a device does or how it is to be used. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP § 2114.
Regarding claim 10, the observation device of Honmou is structurally the same as the instantly claimed. Thus, in the absence of further positively recited structure the device of Honmou is capable of providing adjustment setpoints for the incubation environment parameters and the microscope parameters are selected from one or more datasets, each dataset comprising adjustment setpoints of one or more of: the incubation environment parameters and the microscope parameters, correlated to the target setpoint of the at least one examination parameter in view of at least [0020].
It is noted that apparatus claims cover what a device is, not what a device does or how it is to be used. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP § 2114.
Regarding claim 11, Honmou discloses at least one incubation control unit (computer for culture 36 and operation device 37) configured to supply the incubation atmosphere based on the selected adjustment setpoints for the incubation environment parameters, and
a microscope control unit (computer for observation 14 and operation device 16) configured to operate the microscope based on the selected adjustment setpoints for the microscope parameters [0013-0014, 0020 and 0023].
The microscope control unit has been interpreted as a processor as disclosed in applicant’s specification [0038].
Regarding claim 12, the observation device of Honmou is structurally the same as the instantly claimed. Thus, in the absence of further positively recited structure the microscope control unit (computer for observation 14 and operation device 16) is of Honmou is capable of receiving the target setpoint of the at least one examination parameter from the user interface; selecting the predefined adjustment setpoints for the incubation environment parameters and the microscope parameters; and transmitting the selected adjustment setpoints for the incubation environment parameters to the incubation control unit in view of [0013-0014 and 0020].
Regarding claim 13, Honmou discloses a microscope control unit (computer for observation 14 and operation device 16) configured to operating the microscope based on the selected adjustment setpoints for the microscope parameters, the microscope control unit further configured to: receive the target setpoint of the at least one examination parameter from the user interface; select the predefined adjustment setpoints for the incubation environment parameters and the microscope parameters, and; transmit the selected adjustment setpoints for the incubation environment parameters to at least one incubation control unit, the at least one incubation control unit being configured to supply the incubation atmosphere based on the selected adjustment setpoints for the incubation environment parameters [0013-0014 and 0023].
The microscope control unit has been interpreted as a processor as disclosed in applicant’s specification [0038].
Further, it is noted that apparatus claims cover what a device is, not what a device does or how it is to be used. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP § 2114.
Claim Rejections - 35 USC § 103
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Honmou EP 3819369 as applied to claims 1, 3-4, 7-8 and 10-13 above.
Regarding claim 2, Honmou does not expressly disclose wherein the target setpoint of the at least one examination parameter comprises at least a target temperature of the sample.
However, Honmou does disclose wherein the at least one incubation environment parameter comprises at least one of a temperature in the sample chamber [0020] which is usually in thermal equilibrium with the sample.
Therefore, absent unexpected results, it would have been obvious to one of ordinary skill in the art to select the sample temperature as an examination parameter in order to maintain optimal environmental conditions within the incubation chamber thereby preventing cell necrosis.
Claims 5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Honmou EP 3819369 as applied to claims 1-4, 7-8 and 10-13 above, and further in view of Blanchard US 2018/0346868.
Regarding claim 5, Honmou does not discloses wherein the at least one incubation environment parameter further comprises at least one of a carbon dioxide concentration in the sample chamber, or an oxygen concentration in the sample chamber.
Blanchard discloses a cell culture incubator with integrated imaging systems wherein the at least one incubation environment parameter further comprising a carbon dioxide concentration and an oxygen concentration in the sample chamber [0069, 0075 and 0078].
Absent unexpected results, It would have been obvious to one of ordinary skill in the art to modify Honmou with the environmental monitors and controls as taught by Blanchard to maintain optimal environmental conditions within the incubation chamber thereby preventing cell necrosis.
Regarding claim 9, Honmou does not discloses wherein the at least one examination parameter comprises at least one of a carbon dioxide concentration in the sample chamber, or an oxygen concentration in the sample chamber.
Blanchard discloses a cell culture incubator with integrated imaging systems wherein the at least one examination parameter comprises at least one of a carbon dioxide concentration and an oxygen concentration in the sample chamber [0069, 0075 and 0078].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYDIA EDWARDS whose telephone number is (571)270-3242. The examiner can normally be reached on Monday-Wednesday 08:00-18:00 EST.
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/LYDIA EDWARDS/Primary Examiner, Art Unit 1796
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