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 Arguments
The Examiner thanks Applicant for providing a detailed explanation of the present invention in the Remarks of November 11, 2025. The rejection of the claims under 35 U.S.C. § 102 and 103 have been withdrawn. The rejections of the claims under 35 U.S.C. § 112 have been modified to address the amendment to the claims. The Examiner finds that the claims do not sufficiently correspond to Applicant's explanation or the disclosure and are therefore indefinite. Since the only outstanding rejection of the claims are under 35 U.S.C. § 112, the Examiner suggests Applicant consider canceling or amending the withdrawn claims to includ all the limitations of potentially allowable claim 8 in order to expedite the prosecution of the application.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an 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 limitation(s) is/are: “optical imaging module” in claims 8, 9, 17, 18, and 23.
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.
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 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 8, 9, 17, 18, and 23 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 8 clearly sets forth two separate prisms; however, Applicant contents the prism is one and the same.
In response, the Examiner respectfully disagrees with Applicant's interpretation of claim 8. Claim 8 is as follows:
8. An integrated sensing and imaging system, comprising:
a monolithic optoelectronic chip;
a prism; and
a constructed miniature optical imaging module for differential interference contrast microscopy, including a prism,
wherein the monolithic optoelectronic chip comprises a light-emitting diode and a photodiode positioned to emit light or to receive light, and
wherein the light-emitting diode and the photodiode each comprise, and share, an exposed sapphire substrate at which contact with living cells, together with the miniature differential interference contrast microscopy to realize the integrated sensing and imaging system.
As can be seen above, claim 8 clearly sets forth three separate distinct elements because these elements are listed by separate indented lines:
1) a monolithic optoelectronic chip,
2) prism, and
3) a constructed miniature optical imaging module.
Each of the three elements are taken to be distinct elements because each of them are listed by separate indented line. "Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation." 37 C.F.R. 1.75(i). “Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention” Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). "While we appreciate the Examiner’s point, it is disfavored to interpret a single element as satisfying two different limitations in a claim." Non-precedential decision Board of Patent Appeals and Interferences, Application No. 11/258,697, March 8, 2012, page 9.
The second element, "prism" is distinct from the third element "a constructed miniature optical imaging module," which is recited as "including a prism." Because claim 8 clearly states that the distinct constructed miniature optical imaging module itself has a prism, this sets forth that there are two prisms in the system of claim 8. This interpretation is not unreasonable because Figure. S1 shows two Wollaston prisms.
Claim 9 recites a third prism, "an internal light prism." Claim 9 is not clear if the internal light prism is an element of the claimed system or if the claim is reciting that the claimed system is intended to be used in conjunction with the internal light prism. Claim 9 does not clearly state that the system of claim 9 comprises the internal light prism. In contrast, claim 18 is clear that the light-emitting diode is an element because the claim states the chip "comprises" the light emitting diode.
In addition, one of ordinary skill in the art would not know what structure is encompassed by the term "internal light prism." The term has not been found to be a term of art for any particular class of prisms. The specification does not use the term for a prism. Therefore, one of ordinary skill in the art would not know when a prism is an internal light prism and when a prism is not an internal light prism. The words "internal" and "light" do not provide clarity because it is not evident if the word "internal" is referring to the location of the prism such as internal to some unidentified element or if it is stating that the light is internal to the prism.
Claims 17 and 18 recite "the prism" and it is unclear which prism is being referred to. Furthermore, it would not be clear what "stacked position at the" module means and what other elements that it is stacked with. Applicant contends the prism is part of the module and if this is so, then it is unclear how an element of a modules is stacked at (emphasis made) the module.
Claim 18 recites the monolithic optoelectronic chip "comprises at least a light-emitting diode and a photodiode positioned to emit light or to receive light from the prism." Claim 18 depends on claim 8 which already recites that the chip comprises a light emitting diode and a photodiode. It appears the claim is not intended to recite a second LED and a second photodiode; however, it would be reasonable to interpret claim 18 as such. Because the claim is amendable to two different interpretations, the claim is indefinite.
Claims 8, 9, 17, 18, and 23 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 limitation “constructed miniature optical imaging module” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The term has not been found to be recognized in the art to be the name for structure or a class of structures. The disclosure does not clearly link any disclosed structure. Applicant states that the module is a "conventional DIC imaging system comprising separate LED light source, a prism, and a camera component (November 11, 2025; p. 7). It is not clear to the Examiner what structure is encompassed by Applicant's statement. From the disclosure, a conventional DIC imaging system has more elements than an LED, a prism, and a camera component. Applicant provided Fig. S1 as a DIC imaging system which has many more components than an LED, a prism, and a camera component identified by Applicant. Figure S1 does not show an LED as an element, nor a camera component. The prism in Figure S1 is also not an ordinary prism, but rather, a Wollaston/Nomarski prism.
Applicant's identification also does not appear to be consistent with dependent claims.
Claim 9 recites that the module illuminates and receives linearly polarized light. The module does not appear to illuminate an internal prism, nor receive linearly polarized light from the internal light prism. As such, claim 9 does not clarify what the corresponding structures are. '
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Allowable Subject Matter
Claims 8, 9, 17, 18, and 23 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hwa Andrew S Lee whose telephone number is (571)272-2419. The examiner can normally be reached Mon-Fri 9am-5:30pm.
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/Hwa Andrew Lee/Primary Examiner, Art Unit 2877