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 .
Remarks
This office action fully acknowledges Applicant’s remarks and amendments filed on 09 February 2026.
Claims 8-16 are pending.
Claims 1-7 and 9-30 are canceled.
No claims are withdrawn.
No claims are newly added.
Claim Interpretation
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
“an optics unit generating and projecting/focusing...” as in Claim 8.
“data processing application processing...” as in Claim 8.
“a feeder loading...” as in Claim 8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
“an excitation light source...generated by a laser” as in para. [0032] of applicant’s instant pre-grant publication US 2022/0349824 A1, and equivalents thereof.
Unclear from the disclosure. ***See below under 35 USC 112 b/2nd.
“a downward ramp structure” as in para. [0034] of applicant’s instant pre-grant publication US 2022/0349824 A1, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 8-16 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.
Further, Claim 8 is reliant on particular software for accomplishing the functionality of “processing the electric signal received from the control unit to sort the sample in one or more groups based on fluorescence”. However, the written description fails to disclose the algorithm(s) for performing the claimed specific computer functions of “processing the electric signal received from the control unit to sort the sample in one or more groups based on fluorescence” as in Claim 8. -- See MPEP 2181(II)(B): For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b). -- See Net MoneyIN, Inc. v. Verisign. Inc., 545 F.3d 1359, 1367, 88 USPQ2d 1751, 1757 (Fed. Cir. 2008).
See also In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) (“[W]hen the disclosed structure is a computer programmed to carry out an algorithm, ‘the disclosed structure is not the general-purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.’”) (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999)). In cases involving a special purpose computer-implemented means-plus-function limitation, the Federal Circuit has consistently required that the structure be more than simply a general-purpose computer or microprocessor and that the specification must disclose an algorithm for performing the claimed function.
See, e.g., Noah Systems Inc. v. Intuit Inc., 675 F.3d 1302, 1312, 102 USPQ2d 1410, 1417 (Fed. Cir. 2012); Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. 112(f) the Federal Circuit has stated that “a microprocessor can serve as structure for a computer implemented function only where the claimed function is ‘coextensive’ with a microprocessor itself.”
See EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622, 114 USPQ2d 1711, 1714 (Fed. Cir. 2015), citing In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011). “‘It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed.’” EON Corp., 785 F.3d at 621, 114 USPQ2 at 1714, quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365, 102 USPQ2d 1122, 1125 (Fed. Cir. 2012). “‘[S]pecial programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general-purpose computer.”
EON Corp., 785 F.3d at 623, 114 USPQ2d at 1715 (citations omitted). “Examples of such coextensive functions are ‘receiving’ data, ‘storing’ data, and ‘processing’ data—the only three functions on which the Katz court vacated the district court’s decision and remanded for the district court to determine whether disclosure of a microprocessor was sufficient.” 785 F.3d at 622, 114 USPQ2d at 1714. Thus, “[a] microprocessor or general-purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer implemented functions require disclosure of an algorithm.” Id., 114 USPQ2d at 1714.
To claim a means for performing a specific computer-implemented function and then to disclose only a general-purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. 112(f) claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999); Rain Computing, Inc. v. Samsung Electronics America Co., 989 F.3d 1002, 1007-8, 2021 USPQ2d 284 (Fed. Cir. 2021).
The corresponding structure is not simply a general-purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general-purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241. (“Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. §112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general-purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’” (quoting WMS Gaming, 184 F.3d at 1349, 51 USPQ2d at 1391.))
An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow char t, or “in any other manner that provides sufficient structure.”
Finisar, 523 F.3d at 1340, 86 USPQ2d at 1623; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366, 65 USPQ2d 1934, 1941 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir.1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385, 100 USPQ2d 1690, 1697 (Fed. Cir. 2011); In re Aoyama, 656 F.3d at 1306, 99 USPQ2d at 1945.
However, no specific algorithm(s) is/are defined and the functions therein Claim 8 go beyond a general-purpose computer and are not coextensive with the computer as defined in the MPEP passages cited above.
Therefore, the claim(s) is/are indefinite and rejected under 35 USC 112b/2nd. Applicant may provide a citation to the literature which introduces such software Applicant was in possession of coincident with the above discussion. Discussion with respect to the software/algorithms as in Claim 8 is not found within the disclosure.
Examiner further notes that Applicant’s instant Fig. 12 shows a flowchart related to the function of processing and sorting, but merely amounts to a further narrative description of the process and lacks substantiation through the particular algorithms/calculations performed by the program to achieve the result of sorting.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 8 and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Modiano et al. (US 2012/0228199 A1), hereinafter “Modiano”.
Regarding Claim 8, Modiano teaches a sample sorting apparatus 10 comprising:
a rotating disc 202 having a plurality of wells 14 on a perimeter of the rotating disc 202 for receiving a sample each (Fig. 2A and [0067]: “The seed trays 14 are retained within an indexing transport table 202 of the transport subsystem 200 that is structured and operable to incrementally position each seed tray 14...”);
a feeder 104 loading the samples onto the wells 14 of the rotating disc (Fig. 2A and [0067]: “...a bulk seed hopper 104 and place the isolated seeds in one of a plurality of transparent multi-well seed trays 14...”);
an optics unit 312 generating and focusing an excitation light beam onto the sample (See Fig. 5A: “light sources 312” and para. [0011]: “Light is then directed onto a top portion of loaded seed tray utilizing at least two first light sources positioned to provide different top illumination angles.”);
a photodetector 304 for receiving through the optics unit 312 an emission light generated by the sample (See Fig. 5A: “first imaging device 304” and para. [0068]: “fluorescent markers” – see also paras. [0089-0090].),
and converting an intensity of the emission light into an electric signal and transferring the electric signal to a control unit 604 (Fig. 2B and [0092]: “...the first imaging device 304 transmits the collected multi-spectral image data for each illumination angle and each wavelength to the main controller system 600 for storage and analysis.”);
a computing device 608 having a data processing application processing the electric signal received from the control unit 604 (Fig. 2B and para. [0072]: “Each peripheral controller subsystem 604 can include one or more processors, microprocessors and electronic data storage devices that effectuate communication with various seed sorter system components 22, e.g., sensors, devices, mechanisms, motors, tools, etc., and are networked together with a main controller subsystem 608 to cooperatively operate all the stations, systems and subsystems of the seed sampler system 10...”) to sort the sample in one or more groups 18 based on fluorescence (Fig. 2B and para. [0071]: “The operation of the seed sorter system 10, as illustrated and described with reference to FIGS. 1 through 12D is controlled and automated by the main controller system 600 such that the operations performed by the loading station 100, the first and second imaging stations 300 and 400, and the off-loading station 500 occur substantially without need for human interaction, intervention or control.” – [0072]: “...various custom programs, applications and/or algorithms to effectuate the operation of the seed sorter system 10.”),
wherein the computing device sends a sample sorting data to the control unit for enabling the control unit to execute a collection of the samples according to the groups in respective group containers (Fig. 2B and [0115]: “...the main controller system 600 analyzes the image data collected at the first and second imaging stations 300 and 400 to determine particular phenotype(s) of each seed, and then controls the operation of the off-load and sort station 500 to selectively sort the seeds into the seed repositories 568.”); and
a plurality of air or water valves 142 each connected to a relay, wherein the control unit triggers the relay for enabling the air or water valves 142 to open according to the sample sorting data, thereby enabling the air or water valves 142 to push the samples into the respective group containers through a plurality of channels (See Figs. 3B and 3C, and [0077-0080]: “An air drive 148 operates under the control of the main controller system 600 to linearly move the pistons 142 between the retracted position, shown in FIG. 3B, and an extended, or actuated, position, shown in FIG. 3C.”. See also Fig. 7B and [0111].), as in Claim 8.
Regarding Claim 10, the prior art meets the limitations of Claim 8 as discussed above. Further, Modiano teaches the sorting system discussed above further comprising a guard 110 placed before the rotating disc for controlling flow samples towards the rotating disc (Figs. 2A and 3A, and para. [0075].), as in Claim 10.
Regarding Claim 11, the prior art meets the limitations of Claim 8 as discussed above. Further, Modiano teaches the sorting system discussed above further comprising a plurality of water valves 1112 for pushing the samples towards the disc (See Fig. 15A and para. [0150]: “...each of the first linear actuators 1112 and the loading shoe top and bottom aperture cover actuators can be operated utilizing a...hydraulic power/energy source.”), as in Claim 11.
Regarding Claim 12, the prior art meets the limitations of Claim 8 as discussed above. Further, Modiano does not specifically teach the sorting system discussed above wherein the sample undergoes a redox reaction and changes fluorescence when a redox indicator is added to the sample before subjecting the sample to the excitation light beam, wherein the emission light generated by the sample indicates a fluorescence of the sample after the redox reaction, as in Claim 12.
However, this requirement is drawn to a process recitation. As the claims are drawn to a device, such process recitation is not afforded patentable weight when the prior art device is capable of performing the claimed process. "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc. – MPEP 2114(II). Therein, the device of Modiano commensurately discloses a system providing excitation light and detecting emission light from a sample, and is thus fully capable of detecting such sample emission light due to a redox reaction.
Regarding Claim 13, the prior art meets the limitations of Claim 12 as discussed above. Further, Modiano does not specifically teach the sorting system discussed above wherein the sample is an embryonic aquatic organism, as in Claim 13.
However, limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function – see MPEP 2111.02(II). When an apparatus is claimed, its patentability is based on the structure of the apparatus and not on the function it performs or the field in which it is applied. In this case, whether the device of Modiano commensurately discloses a system providing excitation light and detecting emission light from a sample, and is thus fully capable of sorting embryonic aquatic organisms, particularly given the fact that Modiano teaches seed sorting, wherein aquatic plant seeds are considered embryonic aquatic organisms, given that a seed contains an embryo.
Further as in Claims 8 and 10-13, regarding the sample sorting apparatus being for aquatic organism sample sorting (“for receiving an aquatic organism” as in Claim 8), as now required by Claim 8 and dependents thereof: Limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function – see MPEP 2111.02(II). When an apparatus is claimed, its patentability is based on the structure of the apparatus and not on the function it performs or the field in which it is applied.
In this case, whether the sample is an aquatic organism or some other sortable sample is immaterial, as the function of sorting and the structure performing such sorting is the same. The “aquatic organism” is not a positively claimed structural element of the device and is drawn to an intended workpiece worked upon by the apparatus. As discussed above, Modiano commensurately discloses all of the positively claimed structural elements and is thereby fully capable of performing aquatic organism sample sorting commensurately as claimed.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Modiano in view of Hasegawa et al. (US PAT 7,884,337 B2), hereinafter “Hasegawa”. Modiano has been discussed above.
Regarding Claim 14, the prior art meets the limitations of Claim 8 as discussed above. Further, Modiano teaches the sorting system discussed above wherein the optics unit includes:
a focusing lens arrangement 1264 configured to receive the emission light generated by the sample and focusing the emission light onto the photodetector (Fig. 16E and para. [0166]: “...a reflected image of the bottom of each respective seed is directed from the first bottom mirror 1276 through the focal lens 1264 to the second bottom minor 1284, and then through the respective center window 1220 to the respective imaging device 1016.”),
a plurality of filters for narrowing down a bandwidth of the emission light before the emission light reaches the photodetector ([0119]: “...the first imaging station 300 can collect and transmit to the main controller system 600, images of the top portion of the seeds and seed tray 14′ through each of six band pass filters of the first filter device 308 using light from only a first one of the first light sources 312, as indicated at 708.”), as in Claim 14.
Further regarding Claim 14, Modiano does not specifically teach the sorting system discussed above wherein the optics unit includes a first mirror configured for receiving the excitation light beam from a laser source; a telescopic arrangement of lenses configured to receive the excitation light beam deflected from the first mirror and expanding the excitation light beam before focusing; a second mirror, characterized as being dichroic, configured to receive the excitation light beam focused on the second mirror by the telescopic arrangement and deflecting the excitation light beam to a first lens, wherein the first lens re-collimates the excitation light beam received from the second mirror before projecting it on the samples so that the excitation light beam passing through the sample is a collimated beam; wherein the emission light is received by the first lens and transmitted through the second mirror before passing onto the focusing lens arrangement, and wherein the plurality of filters is placed within the focusing lens arrangement, as in Claim 14.
However, Applicant’s arrangement of lenses and mirrors represent known techniques in the art for handling light for imaging. For example, Hasegawa teaches a respective optical arrangement for exciting and detecting fluorescence comprising a first mirror 114 configured for receiving the excitation light beam from a laser source 111 (Fig. 12 and col. 5, line 46);
a telescopic arrangement of lenses 113 configured to receive the excitation light beam and expanding the excitation light beam before focusing (Fig. 12 and col. 5, line 39 – see also col. 9, line 38 discussing the adjustability of the beam expander, thereby necessarily comprising a telescoping lens arrangement for achieving such adjustability.);
a second mirror 102, characterized as being dichroic, configured to receive the excitation light beam focused on the second mirror and deflecting the excitation light beam to a first lens 101 (Fig. 12 and col. 9, line 41),
wherein the first lens 101 re-collimates the excitation light beam received from the second mirror 102 before projecting it on the samples so that the excitation light beam passing through the sample is a collimated beam (Fig. 12 shows light returned by the objective lens 101 as collimated before being focused onto the detectors 134/144. See also col. 6, line 14 discussing image transfer by the objective.);
wherein the emission light is received by the first lens 101 and transmitted through the second mirror 102 before passing onto a focusing lens arrangement 131/141 (Fig. 12 and col. 6, line 14). Therein, this arrangement provides organized, collimated light to the sample, improving resolution and reducing errors related to nearby particles being unresolved.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Modiano wherein the optics unit includes a first mirror configured for receiving the excitation light beam from a laser source; a telescopic arrangement of lenses expanding the excitation light beam before focusing; a second mirror, characterized as being dichroic, and deflecting the excitation light beam to a first lens, wherein the first lens re-collimates the excitation light beam received from the second mirror before projecting it on the samples so that the excitation light beam passing through the sample is a collimated beam; wherein the emission light is received by the first lens and transmitted through the second mirror before passing onto the focusing lens arrangement, such as suggested by Hasegawa, so as to provide organized, collimated light to the sample, improving resolution and reducing errors related to nearby particles being unresolved.
Further regarding Claim 14, Hasegawa teaches the optical path as [laser [Wingdings font/0xE0] beam expander [Wingdings font/0xE0] first mirror [Wingdings font/0xE0] second mirror [Wingdings font/0xE0] first lens] whereas the instant claim recites the optical path as [laser [Wingdings font/0xE0] first mirror [Wingdings font/0xE0] beam expander [Wingdings font/0xE0] second mirror [Wingdings font/0xE0] first lens]. Further, Hasegawa does not specifically teach the plurality of filters as being placed within the focusing lens arrangement. However, mere change in orientation or position of elements absent any criticality or unexpected result is an obvious matter of design choice – see MPEP 2144.04(VI)(C). Herein, one of ordinary skill in the art would find it obvious that the device having the claimed relative order of optical elements would not perform differently than the prior art device, absent evidence of criticality, non-obviousness, or unexpected results associated with the order of the optical elements. The obvious combination of Modiano and Hasegawa commensurately teaches all the optical handling elements of the claimed invention, wherein the specific order of reflection, collimation, and filtering is immaterial given that the same end-light product is produced.
Regarding Claim 15, the prior art meets the limitations of Claim 14 as discussed above. Further, Modiano teaches the sorting system discussed above wherein the electric signal is a voltage signal ([0074]: “More specifically, sensor information that is collected and processed for use in controlling the operation of the seed sorter system 10 can include information like...voltage...”), as in Claim 15.
Further regarding Claim 15, Modiano does not specifically teach the sorting system discussed above wherein the excitation beam has a wavelength of approximately 532 nm, as in Claim 15.
However, as the emission intensity of particular fluorophores is a property that can be modified by adjusting the excitation light wavelength, the precise excitation beam wavelength would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed wavelength value of 532 nm cannot be considered critical. Thus, one of ordinary skill in the art would have optimized through routine experimentation the excitation beam wavelength so as to achieve the maximal fluorescence intensity (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). MPEP 2144(I): The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. One skilled in the art would find it obvious and routine to optimize the excitation wavelength, which represents a mere operating state of the system, for a specific fluorophore at hand wherein many common fluorophores have strong absorption bands near 520-540 nm, and wherein 532 nm solid-state lasers are standard, inexpensive, and widely used. Thus, choosing 532 nm is a predictable optimization to achieve higher fluorescence intensity and/or compatibility with common dyes.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Modiano in view of Hasegawa, as applied to Claims 14-15 above, and in further view of Corle et al. (T. R. Corle, C.-H. Chou, and G. S. Kino, "Depth response of confocal optical microscopes," Opt. Lett. 11, 770-772 (1986).), hereinafter “Corle”, and Hickson (Hickson, Paul; “Wide-field tracking with zenith-pointing telescopes”, Monthly Notices of the Royal Astronomical Society, Volume: 330, Issue: 3, pages 540 - 546, March 2002.), hereinafter “Hickson”.
Regarding Claim 16, the prior art meets the limitations of Claim 15 as discussed above. Further, Modiano/Hasegawa does not specifically teach the sorting system discussed above wherein the telescopic arrangement of lenses includes: an iris diaphragm positioned between the first mirror and the second mirror for adjusting the diameter of the excitation light beam after expansion by the telescopic arrangement and before the excitation light beam reaches the dichroic second mirror, wherein the iris diaphragm controls the beam diameter for illuminating the samples in the wells of the rotating disc, as in Claim 16.
However, Corle teaches a respective optical analysis apparatus comprising a beam expander in conjunction with an iris diaphragm controlling the diameter of the illumination beam so as to provide indecent light to the sample as plane waves in addition to collimated waves, wherein this arrangement of particularly structured light is known in the art to enhance image axial resolution (p. 770-771).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the sorting system of Modiano/Hasegawa wherein the telescopic arrangement of lenses includes: an iris diaphragm configured for adjusting a diameter of the exciting light beam deflected from the first mirror, such as suggested by Corle, so as to enhance image axial resolution, thereby reducing errors related to unresolved emissions of nearby particles.
Further as in Claim 16, similarly as asserted above regarding Claim 14, merely rearranging the order in which the light is reflected from the mirrors is seen herein as insignificant rearrangement of parts. This is also the case regarding Applicant’s specific placement of the iris disphragm in the telescopic arrangement of lenses as between the first and second mirrors. The iris diaphragm remains as performing the same optical function in either location, acting as an aperture stop to limit the cross-sectional extent of the beam. Merely placing said iris diaphragm between two mirrors instead of upstream of those mirrors amounts to no more than rearrangement of known optical components.
Mirrors merely redirect the beam of light. They do not change the fundamental role of the iris as the element that defines the permitted beam diameter. If the beam reaches the iris before or after reflection by the mirrors, the iris still intercepts outlying rays and sets the usable beam size. The mirrors merely fold the path of the beam; shifting the iris to a different point along the folded beam path does not patentably distinguish the arrangement because one of ordinary skill in the art would understand that optical components may be repositioned along the beam path according to packaging constraints, alignment convenience, available space, or manufacturability so long as the beam is still presented to the iris for aperture control.
Further, the device of Corle places the iris after a beam expander (Fig. 1), which would be obvious to one skilled in the art given that the purpose of the iris is to limit the beam size while the expander is to grow the beam size to a usable size. The modification of Modiano/Hasegawa in view of Corle thus results in the diameter of the excitation beam being adjusted after expansion and before the beam reaches the dichroic second mirror commensurately as claimed.
Further as in Claim 16, Hickson teaches a respective optical arrangement for handling a beam of light, specifically an image in this case, and teaches that flat mirrors for changing the path of light have no effect on said light and only serve to change the direction of light, such mirrors having no optical power (page 542, section 2.1: “The actual relay system may contain flat mirrors that serve only to change the direction of the light beam. Such mirrors have no effect on the properties of the final image, so for the purpose of optical design and analysis one can ignore these mirrors and consider only the elements with optical power.”).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that the placement of the iris diaphragm positioned between the first and second mirrors instead of upstream of the first and second mirrors is a mere obvious alternative arrangement not affecting the actual optical shaping of the beam.
Further as in Claim 16, regarding the recitation “for adjusting the diameter of the excitation light beam after expansion by the telescopic arrangement and before the excitation light beam reaches the dichroic second mirror, wherein the iris diaphragm controls the beam diameter for illuminating the samples in the wells of the rotating disc”, this is not an actively required step as the claims are drawn to a device. "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc. – MPEP 2114(II). As the iris diaphragm of combined Modiano/Hasegawa/Corle is commensurately structured as in the instant claims, said iris diaphragm is fully capable of achieving the claimed functions thereto.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Modiano in view of Ammann et al. (US 2016/0122808 A1), hereinafter “Ammann”. Modiano has been discussed above.
Regarding Claim 9, the prior art meets the limitations of Claim 8 as discussed above. Further, Modiano teaches the sorting system discussed above further comprising an electronics unit including a plurality of relays 148 for triggering the air or water valves 142 ([0077]: “An air drive 148 operates under the control of the main controller system 600 to linearly move the pistons 142 between the retracted position, shown in FIG. 3B, and an extended, or actuated, position, shown in FIG. 3C. Although the air drive 148 is shown as a single air drive configured to simultaneously manipulate the position of each of the pistons 142, it will be understood that the seed loading station 100 could include a separate, independent air drive 148 for each piston 142.”),
a motor 208 for rotating the disc connected to a disc speed controller ([0086]: “...the indexing transport table 202 comprises a round platform 204 that is rotationally mounted to a drive device 208, such as a high torque stepper motor, controlled by the main controller system 600.” – Further, while Modiano does not specifically teach a separate disc speed controller from the main control system, merely making as separate pieces what exists in the prior art as one integral piece absent any criticality or unexpected result is an obvious matter of design choice – see MPEP 2144.04 (V)(B).),
at least one power adapter for powering the plurality of relays and the photodetector (See para. [0150] and note that the photodetectors of Modiano rely on electrical signals, thereby necessarily comprising a power adapter.), as in Claim 9.
Further regarding Claim 9, Modiano does not specifically teach the sorting system discussed above further comprising a beam break detector including an infrared sensor for detecting when the sample passes a fluorescent detection area of the optic unit, as in Claim 9.
However, Ammann teaches a respective automated analyzer comprising an infrared source and sensor configured as a beam break/interruption sensor to detect the presence of a sample within respective stations of the device ([0252]), wherein this arrangement provides a means for the analyzer to know when to initiate analysis, thereby conserving resources and reducing errors due to the absence of a sample during detection.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the sorting system of Modiano further comprising a beam break detector including an infrared sensor for detecting when the sample passes a fluorescent detection area of the optic unit, such as suggested by Ammann, so as to conserve resources and reduce errors due to the absence of a sample during detection.
Response to Arguments
Objections
Applicant’s amendments sufficiently overcome the objections set forth over Claims 8 and 9 by the previous office action. As such, those claim objections over Claims 8 and 9 are withdrawn.
35 USC 112(b/f)
The 35 USC 112(f) interpretation and corresponding 35 USC 112(b) indefiniteness rejection of Claim 9 are withdrawn as Applicant points out the claim describes the structure of the “electronics unit”.
Regarding Claim 8, the elements of “an optics unit generating and projecting/focusing...”, “data processing application processing...”, and “a feeder loading...” are maintained interpreted under 35 USC 112(f) because although Applicant has removed the “configured for” language from the claims, this change does not settle the issue of a generic placeholder appended with a function. Linking words/phrases like “configured for” can indicate function, but it is also not necessary to use a linking word/phrase at all if the claim language still conveys a function – see MPEP 2181.
Further Applicant alleges the generic placeholder terms have specific meaning in the art. However, Applicant’s definitions of the terms “feeder”, “optics unit”, and “data processing application” merely describe generic functions and possible components without providing a specific unambiguous structure. As such, these terms remain interpreted under 35 USC 112(f) herein.
Further, as a result of the maintained 35 USC 112(f) interpretation of “data processing application processing...”, as in Claim 8, the coincident 35 USC 112(b) rejection of Claim 8 for providing the generic computer-implemented placeholder while the specification does not describe a particular corresponding algorithm is also maintained herein.
Further, as 35 USC 112(f) is maintained as applying to the “data processing application processing...”, the requirement under 35 USC 112(b) for algorithm disclosure is maintained. Applicant argues that the specific algorithm is disclosed in paras. [0044-0049] and Fig. 12. However, an algorithm must amount to a finite sequence of steps for carrying out the claimed function. Applicant’s cited sections and figure are no more than a functional summary of what the software does: perform generic calibration, detect a peak when certain criteria are met, average fluorescence values, rank values, use results to determine which valve is actuated.
This is closer to saying what the software is intended to accomplish rather than disclosing, with sufficient specificity, how the software carries out the full claimed function. It is even further noted that Fig. 12 step 202 recites the use of a generic algorithm as a step of what Applicant alleges is itself the algorithm for the claimed sorting functions. Thus, Examiner maintains the algorithm disclosure requirement under 35 USC 112(b).
35 USC 102(a)(1)
Claim 8
Applicant’s arguments are on the alleged grounds that the apparatus of Modiano is not anticipatory over the claimed “aquatic organism sorter” given that Modiano is not specifically disclosed as configured for the sorting of aquatic organisms.
Applicant’s arguments are not persuasive because limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function – see MPEP 2111.02(II). When an apparatus is claimed, its patentability is based on the structure of the apparatus and not on the function it performs or the field in which it is applied.
In this case, whether the sample is an aquatic organism or some other sortable sample is immaterial, as the function of sorting and the structure performing such sorting is the same. The “aquatic organism” is not a positively claimed structural element of the device and is drawn to an intended workpiece worked upon by the apparatus, thus holding no patentable weight. As discussed above, Modiano commensurately discloses all of the positively claimed structural elements and is thereby fully capable of performing aquatic organism sample sorting commensurately as claimed. Further, as aquatic plant seeds are aquatic organisms, Modiano is further capable of sorting aquatic organisms.
Applicant’s arguments are further on the alleged grounds that the apparatus of Modiano actuates vacuum valves to pull samples into separate containers, as opposed to the Claim 8 requirement that “the air or water valves push the organism samples into the respective group containers”.
Applicant’s arguments are not persuasive because the perm “push” is interpreted broadly herein to merely mean “exert a force on”. As such the vacuum force of the device of Modiano commensurately “pushes” the seeds being sorted. Applicant’s instant claims merely recite actuation of valves, not particularly requiring the pushing pressure be positive. Further, Modiano para. [0082] discussed applying a pressure to push the sorted seeds into their respective containers.
Applicant’s arguments are further on the alleged grounds that the claimed mode of detection is based on fluorescence, whereas Modiano is drawn to multi-spectral imaging.
Applicant’s arguments are not persuasive because the Claim 8 recitation “a computing device having a data processing application processing the electric signal received from the control unit to sort the aquatic organism samples in one or more groups based on fluorescence” merely describes a generic function of the device and intended use for detecting fluorescence. The prior art of Modiano commensurately having illumination (excitation) beams coupled with detectors is fully capable of performing fluorescence analysis. Further, Modiano specifically teaches the apparatus as configured for fluorescence-based sorting in para. [0068], and para. [0158] discusses the use of UV lights commonly used in fluorescence measurements for excitation. While applicant further alleges the signal path is different in Modiano, this arguments holds no weight in the claims which do not require the specific signal paths Applicant is arguing, and, as discussed above, the signal path is immaterial as the apparatus of Modiano is commensurately structured as in the instant claims and is thus fully capable of performing the claimed fluorescence detection, and Modiano specifically discusses fluorescence detection and provides suitable excitation source therefor.
Claim 10
Applicant alleges Modiano fails to teach a guard specifically for preventing aquatic organisms from falling from the rotating disc. However, the guard 110 of Modiano is fully capable of preventing aquatic organisms from falling from the rotating disc given its commensurate structure as a mere “guard”. Applicant may claim the specific structure which is specific to aquatic organisms, otherwise limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function – see MPEP 2111.02(II).
Claim 11
Applicant alleges that the “hydraulic actuators” of Modiano are not commensurate with the “valves” of Claim 11. However, as the actuators of Modiano may be actuated by a hydraulic source, and the actuators are controlled by the regulators/valves 1140 (Fig. 15F), the valve structure of the linear actuator causes the pushing of the samples through the linear actuator.
Claim 12
Applicant alleges that the cited section of Claim 12 is not merely a process recitation, instead defining characteristics of the sample, and that the “capable of” doctrine allegedly does not apply because Modiano is allegedly not capable of performing fluorescence measurements.
Applicant’s arguments are not persuasive because the claimed process of using a redox indicator for the sample to undergo a redox reaction is drawn to a process recitation (the sample undergoing a redox reaction process, a user adding a redox indicator, generation of emission light). As the claims are drawn to a device, such process recitation is not afforded patentable weight when the prior art device is capable of performing the claimed process. "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc. – MPEP 2114(II). Further, as discussed above, Modiano is fully capable of and specifically discusses performing sorting operations based on fluorescence.
Claim 13
Applicant’s arguments are on the grounds that Modiano is not capable of use with aquatic organisms, and that Examiner’s assertion that Modioano is capable of sorting aquatic organisms is not correct as a seed is allegedly not an organism.
Applicant’s arguments are not persuasive because limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function – see MPEP 2111.02(II). When an apparatus is claimed, its patentability is based on the structure of the apparatus and not on the function it performs or the field in which it is applied.
In this case, whether the sample is an embryonic aquatic organism or some other sortable sample is immaterial, as the function of sorting and the structure performing such sorting is the same. The “aquatic organism” is not a positively claimed structural element of the device and is drawn to an intended workpiece worked upon by the apparatus. As discussed above, Modiano commensurately discloses all of the positively claimed structural elements and is thereby fully capable of performing aquatic organism sample sorting commensurately as claimed. Further, as aquatic plant seeds are aquatic organisms (A seed is considered an organism because it contains living embryonic tissue which is essential for germination and growth into a new plant.), Modiano is further capable of sorting aquatic organisms.
Further, Applicant alleges that the “aquatic organism” being a seed is not consistent with Applicant’s instant specification. However, the plain meaning of “organism” in the claims encompasses seeds and is consistent with Applicant’s specification as a seed is an organism, thus aquatic seeds are aquatic organisms – see MPEP 2111.01.
Thus, the rejection of Claims 8 and 10-13 are maintained as rejected under 35 USC 102 as anticipated by the prior art of Modiano.
35 USC 103
Claim 9 Modiano and Ammann
Applicant alleges that Ammann is non-analogous art and that there is no teaching or motivation to combine.
Applicant’s arguments are not persuasive because Ammann is analogous art in that both Ammann and Modiano are drawn to optical sample processing and analysis. The Application of Ammann for processing patient samples while Modiano is used for processing seed samples is immaterial as the overarching goal of optical sample processing and analysis remains the same. Further, while Modiano may be capable of detecting the presence/absence of seeds, this does not preclude the addition of an additional detector arrangement for ensuring samples are loaded into the device. One skilled in the art would be motivated to provide the beam stop arrangement of Ammann to Modiano to provide further sample detection confirmation.
Thus, Claim 9 is maintained as rejected under 35 USC 103 as unpatentable over Modiano in view of Ammann.
Claims 14-15 Modiano and Hasegawa
Applicant alleges that Hasegawa is non-analogous art and that there is no teaching or motivation to combine.
Applicant’s arguments are not persuasive because Hasegawa is analogous art in that both Hasegawa and Modiano are drawn to optical sample processing and analysis. The Application of Hasegawa for flow cytometry while Modiano is used for processing seed samples is immaterial as the overarching goal of optical sample processing/detection and analysis remains the same. Further, while Modiano may not identify a problem with resolution, one skilled in the art would remain as motivated to further enhance the resolution through available means and would thus be motivated to provide the arrangement of Claims 14-15 to provide collimated light for high resolution detection.
Applicant further alleges that the differing optical path among Modiano/Hasegawa and the claimed invention is more than an obvious design choice because the position of the beam “affects beam divergence, collimation, optical aberrations, and system alignment”.
Applicant’s arguments are not persuasive because Applicant has merely stated common problems occurring in optical systems, not particularly defining how the arrangement of mirrors of Modiano/Hasegawa would be unsuitable for the purposes of the instant claimed invention. Mirrors merely redirect the beam of light. They do not change the fundamental role of the optical elements that shape the beam. The mirrors merely fold the path of the beam; shifting the optical components to a different point along the folded beam path does not patentably distinguish the arrangement because one of ordinary skill in the art would understand that optical components may be repositioned along the beam path according to packaging constraints, alignment convenience, available space, or manufacturability so long as the beam is still presented to the optical components for optical control.
Thus, Claims 14-15 are maintained as rejected under 35 USC 103 as unpatentable over Modiano in view of Hasegawa.
Claim 16 Modiano, Hasegawa, and Corle
Applicant’s arguments are on the grounds that Modiano/Hasegawa/Corle does not teach the specific positional and functional relationships of the amended iris diaphragm; and that Corle is non-analogous art.
Applicant’s arguments are not persuasive because, similarly as above, the particular placement of the iris diaphragm as upstream to versus between the first and second mirrors is seen as an obvious matter of design choice – see the rejection under 35 USC 103 above in the body of the action. Further, the identical structure of an “iris diaphragm” in Corle achieves the identical claimed functions of limiting the beam diameter. Further, Corle is analogous art in that both Corle and Modiano are drawn to optical sample processing and analysis. The Application of Corle for confocal microscopy while Modiano is used for processing seed samples is immaterial as the overarching goal of optical sample processing and analysis remains the same (both the devices perform optical handling on a beam of light).
Additionally, Hickson is newly cited herein (as necessitated by Applicant’s amendments specifying the position of the iris diaphragm between the first and second mirrors) for teaching that flat mirrors for changing the path of light have no effect on said light and only serve to change the direction of light, such mirrors having no optical power (page 542, section 2.1: “The actual relay system may contain flat mirrors that serve only to change the direction of the light beam. Such mirrors have no effect on the properties of the final image, so for the purpose of optical design and analysis one can ignore these mirrors and consider only the elements with optical power.”). As such, one skilled in the art would find the particular arrangement of mirrors and iris diaphragm as obvious alternates achieving an identical final beam disposition.
Thus, Examiner sets forth the rejection of Claim 16 under 35 USC 103 as unpatentable over Modiano in view of Hasegawa, Corle and Hickson.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/B.J.K./Examiner, Art Unit 1798
/NEIL N TURK/Primary Examiner, Art Unit 1798