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 05/12/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
The amendment filed 07/30/2025 has been entered. Claim 1 has been amended and claims 7-12 have been cancelled. No new matter has been introduced.
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 1-6 and 13-20 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.
Claim 1 recites “a depth of field of the macro observation system is ±2.5 mm or more” in the last line. The examiner is unsure what depth of field the claimed macro observation system is supposed to have since the claimed limitation covers all cases of macro observation systems, this makes the metes and bounds of the claim unclear. For the purposes of examination the examiner has assumed that if the prior art describes a macro observation system, then the limitation is inherently met. Additionally, since claims 2-6 and 13-20 depend on the independent claim 1, they have the same deficiencies.
Response to Arguments
Applicant's arguments filed 07/30/2025 have been fully considered but they are not persuasive.
The applicant amended, and argued, that the prior art does not teach wherein the macro observation system operates in a reduced magnification, the examiner is not persuaded. The examiner notes in prior art Murakami, in paragraph [0091], it is stated that “the macro spot observation, the low-magnification objective lens 32 is used to observe the sample in a broad range” with example of 3x and micro examples of “10, 20, 50, 100 times” so the macro observation system is a reduced magnification compared to the micro observation system.
The applicant further argues that since the prior art does not teach wherein the sample is housed in a well plate having a plurality of wells, the problem of the side surface of each well is reflected does not arise and “an angle of an object-side most off-axis chief ray of the macro observation system is within ± 5 degrees”, is not needed and is not met, the examiner is not persuaded.
Murakami does not teach a macro observation with a plurality of wells, or wherein the macro observation system includes: a plurality of lenses disposed in the vicinity of an aperture stop; and a large-diameter lens disposed at a position on a side of the sample with respect to the plurality of lenses and having a diameter larger than diameters of the plurality of lenses. However, Sakaguchi (JP 2011170074 – art cited by the applicant) teaches an observation system with a macro observation system that includes a plurality of wells (fig. 1 microplate 3), and wherein the macro optical system includes a plurality of lens (lens groups Gr1-GR3 in figure 1 and 4) in the vicinity of an aperture stop (fig. 4 - st); a large-diameter lens (lens GR1) positioned on a side of the sample with respect to the plurality of lenses with a larger diameter than the plurality of lenses. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the observation system according to Murakami to include a macro observation system with a plurality of wells and wherein the macro optical system includes a plurality of lens in the vicinity of an aperture stop; a large-diameter lens positioned on a side of the sample with respect to the plurality of lenses with a larger diameter than the plurality of lenses for the purposes of effectively guiding light to a collimator, and to achieve desired image results (Sakaguchi example 2).
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.
Claims 1-4 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Murakami (US Patent Publication 20020071175) in view of Sakaguchi (JP201170074 – cited by applicant).
Regarding claim 1: Murakami teaches (fig. 3B) an observation device (microscope unit 1) comprising: a macro observation system that captures an image of a sample at a reduced magnification (macro objective lens 32 along optical path r – [0048]); and a micro observation system (micro objective lens 21) that includes a nosepiece to which a plurality of objective lenses is mountable (revolver 20, has multiple objective lens), and captures an image of the sample at an equal magnification or an increased magnification (paragraph [0091]), wherein the macro observation system and the micro observation system are arranged so as to satisfy a first condition,
Murakami is silent regarding the distances between the macro and micro axis, and wherein a diagonal length of a photographing range of the macro observation system is 80 mm or more, an angle of an object-side most off-axis chief ray of the macro observation system is within ± 5 degrees, and a depth of field of the macro observation system is ± 2.5 mm or more, and wherein the first condition is satisfied: that a distance from a macro optical axis to a micro optical axis is equal to or less than a square root of a sum of squares of a first distance and a second distance, the first distance is a distance between the macro optical axis and a central axis of an outer diameter of the nosepiece, the second distance is a distance between the central axis of the outer diameter and a side surface of the nosepiece. Murakami does disclose that the macro objective lens (32) and the micro objective lens (21) cooperate and move with respect to each other (paragraph [0048 last sentence). Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have the distance from a macro optical axis to a micro optical axis is equal to or less than a square root of a sum of squares of the first distance and the second distance, for the purposes of efficiently focusing on the sample (Murakami [0048]); and since it has been held wherein the general conditions are met and that finding the workable or optimum ranges involves only routine skill in the art, See in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and MPEP 2144.05.
Additionally, Murakami does not teach a macro observation with a plurality of wells, or wherein the macro observation system includes: a plurality of lenses disposed in the vicinity of an aperture stop; and a large-diameter lens disposed at a position on a side of the sample with respect to the plurality of lenses and having a diameter larger than diameters of the plurality of lenses. However, Sakaguchi (JP 2011170074 – art cited by the applicant) teaches an observation system with a macro observation system that includes a plurality of wells (fig. 1 microplate 3), and wherein the macro optical system includes a plurality of lens (lens groups Gr1-GR3 in figure 1 and 4) in the vicinity of an aperture stop (fig. 4 - st); a large-diameter lens (lens GR1) positioned on a side of the sample with respect to the plurality of lenses with a larger diameter than the plurality of lenses. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the observation system according to Murakami to include a macro observation system with a plurality of wells and wherein the macro optical system includes a plurality of lens in the vicinity of an aperture stop; a large-diameter lens positioned on a side of the sample with respect to the plurality of lenses with a larger diameter than the plurality of lenses for the purposes of effectively guiding light to a collimator, and to achieve desired image results (Sakaguchi example 2).
Regarding claim 2: Murakami and Sakaguchi teach the observation device according to claim 1, as set forth above. Murakami is silent regarding the exact angle between the first and second plane, wherein an acute angle formed by a first plane and a second plane is 40 degrees or less, the first plane is a plane including the macro optical axis and the central axis of the outer diameter, and the second plane is a plane parallel to a front surface of the observation device and parallel to the macro optical axis.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have an acute angle formed by a first plane and a second plane is 40 degrees or less, since it has been held that finding the workable or optimum ranges involves only routine skill in the art, See in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and MPEP 2144.05.
Regarding claim 3: Murakami and Sakaguchi teach the observation device according to claim 1, as set forth above. Murakami further teaches wherein the macro observation system and the micro observation system are arranged so as to satisfy a third condition, the third condition is that the micro optical axis is arranged in a first region, and the first region is one of two regions defined by two tangent planes drawn from the central axis of the outer diameter of the nosepiece toward a side surface of a first cylinder and corresponds to an obtuse angle formed by the two tangent planes, and the first cylinder is a cylinder having a diameter that is a maximum outer diameter of the macro observation system and a cylindrical axis that is the macro optical axis (See fig. 3B).
Regarding claim 4: Murakami and Sakaguchi teach the observation device according to claim 2, as set forth above. The limitations of claim 4 are substantially the same as claim 3, so the same rejection applies.
Regarding claim 13: Murakami and Sakaguchi teach the observation device according to claim 1, as set forth above. Murakami further teaches wherein the nosepiece is a revolving nosepiece (objective lens 21 is attached to revolver 20, that revolves the objective lens).
Regarding claim 14: Murakami and Sakaguchi teach the observation device according to claim 2, as set forth above. The limitations of claim 14 are substantially the same as claim 13, so the same rejection applies.
Regarding claim 15: Murakami and Sakaguchi teach the observation device according to claim 3, as set forth above. The limitations of claim 15 are substantially the same as the limitations of claim 13, so the same rejection applies.
Regarding claim 16: Murakami and Sakaguchi teach the observation device according to claim 4, as set forth above. The limitations of claim 16 are substantially the same as claim 13, so the same rejection applies.
Claims 5-6 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Murakami (US Patent Publication 20020071175) in view of Sakaguchi (JP2011170074 – cited by applicant) and further in view of Li (US Patent Publication 20200073105).
Regarding claim 5: Murakami and Sakaguchi teach the observation device according to claim 3, as set forth above. Murakami further teaches an epi-illumination system that illuminates a region a region intersecting the micro optical axis (lamp house 111 and lamp 11 intersect optical path q, where the micro optical axis lies).
Neither Murakami or Sakaguchi teach wherein the observation device further includes a moving stage that moves the sample, and wherein the epi-illumination system is arranged so as to satisfy a fourth condition, the fourth condition is that an angle formed by an extending direction of the epi- illumination system and a second plane is within a central angle range of an arc formed by projecting a region overlapping the first region and a third region on a projection plane orthogonal to the optical axis of the macro observation system, and an angle within the central angle range is represented by an angle with respect to the second plane, the second plane is parallel to a front surface of the observation device and parallel to the macro optical axis, a second region is a minimum rectangular region including all of the macro observation system, the micro observation system, and a movable range of the moving stage, and the third region is a region occupied by a cylinder having a radius that is a maximum distance in a direction of a short side of the movable range of the moving stage between the central axis of the outer diameter and a contour line defining the second region, and a cylindrical axis that is the central axis of the outer diameter.
In a similar field of endeavor, Li teaches a microscope that utilizes a moving stage (fig. 1, stage 13 and paragraph [0040]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the observation device according to Murakami and Sakaguchi, to include a moving stage, as taught by Li, for the purposes of achieving better manipulation when observing a sample on the moving stage (Li paragraph [0029]).
Additionally, with the modification, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to position the epi-illumination system to satisfy the fourth condition since it has been held that finding the workable or optimum ranges involves only routine skill in the art, See in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and MPEP 2144.05.
Regarding claim 6: Murakami and Sakaguchi teach the observation device according to claim 4, as set forth above. The limitations of claim 6 are substantially the same as the limitations of claim 5, so the same rejection applies.
Regarding claim 17: Murakami, Sakaguchi and Li teach the observation device according to claim 7, as set forth above. The limitations of claim 17 are substantially the same as claim 13, so the same rejection applies.
Regarding claim 18: Murakami and Sakaguchi teach the observation device according to claim 1, as set forth above. Murakami further teaches wherein the macro observation system would be above the sample (see fig. 1) and wherein the micro observation system is disposed on the same side as the macro observation system (see fig. 1).
Neither Murakami or Sakaguchi teach wherein the observation device includes a moving stage.
In a similar field of endeavor, Li teaches a microscope that utilizes a moving stage (fig. 1, stage 13 and paragraph [0040]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the observation device according to Murakami and Sakaguchi, to include a moving stage, as taught by Li, for the purposes of achieving better manipulation when observing a sample on the moving stage (Li paragraph [0029]).
Regarding claim 19: Murakami, Sakaguchi and Li teach the observation device according to claim 5, as set forth above. Murakami further teaches wherein the macro observation system (lens 32) is disposed on the upper side of the sample (See fig. 1), and wherein the micro observation system is disposed on the same side as the macro observation system (see fig. 1); wherein the epi-illumination system is disposed on the same side that the macro observation system is disposed (all three systems are on the same side of observing the sample).
Regarding claim 20: Murakami, Sakaguchi and Li teach the observation device according to claim 6, as set forth above. The limitations of claim 19 are substantially the same as claim 19, so the same rejection applies.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Euteneuer (US Patent Publication 20120050851) and Soenksen (US Patent Publication 20040170312) both disclose a system with a macro and micro optical system with some structural similarities to the claimed invention, but do not disclose all of the limitations of the independent claim.
Applicant's amendment necessitated the new grounds 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 Anna Smith whose telephone number is (571)270-1401. The examiner can normally be reached Mon-Fri 8:00 am - 4 pm (MST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571) 272-3333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA SMITH/Examiner, Art Unit 2872 10/1/2025
/RICKY L MACK/Supervisory Patent Examiner, Art Unit 2872