DETAILED CORRESPONDENCE
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
As to the claim amendments and remarks on 10/23/25, the previous prior art rejection has been modified to address the claim amendments. Further, a new ground of rejection is provided to address the claim amendments.
Claim Status
Claims 15-22, 24, 36-45 are pending with claims 15-22, 24, 36-41, 45 being examined and claims 42-44 deemed withdrawn.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 15-17, 19-24, 37-39, 41 are rejected under 35 U.S.C. 102a1 as being anticipated by Hitachi et al (Translation of JP6286183B2; hereinafter “Hitachi”; already of record).
As to claim 15, Hitachi teaches an imaging system (Hitachi; [1, 11-20]), comprising:
a flow cell, the flow cell comprising a first substrate including a first surface, a second substrate including a second surface, and a fluid passageway between the first surface and the second surface (Hitachi teaches a flow cell with upper substrate 201 and lower substrate 204 and a fluid pathway therebetween; [14], Fig. 2a/b);
an imager, the imager comprising an immersion objective, the immersion objective comprising a distal lens surface, the immersion objective at least partially immersed in a fluid (Hitachi teaches an immersion objective lens 202; [14-15], Fig. 2);
wherein, when in a first configuration, the system is configured to image emitted radiation from analytes associated with the first surface, with the distal lens surface spaced by a first vertical distance from the first surface, the first vertical distance including a fluid segment and a substrate segment (Hitachi teaches measuring the bottom surface of the upper plate; [14-15], Fig. 2a. Hitachi teaches a z-stage which moves the object or lens up and down such that the vertical distance is capable of changing; [19, 24]);
wherein, when in a second configuration, the system is configured to image emitted radiation from analytes associated with the second surface, with the distal lens surface spaced by a second vertical distance from the second surface, the second vertical distance including fluid segments and a substrate segment (Hitachi teaches measuring the top surface of the lower plate; [14-15], Fig. 2b);
wherein the first vertical distance is substantially the same as the second vertical distance, and wherein the fluid segment of the first vertical distance is substantially the same as the fluid segments of the second vertical distance (Hitachi teaches the distance remains unchanged where in Fig. 2a the fluid distance is the top and where in Fig. 2b the fluid distance is the top fluid portion as well as the fluid passageway/flow channel portion; [14-15], Fig. 2a/b);
wherein the fluid is retained in a reservoir covering a top of the first substrate, the fluid covering the top of the first substrate, wherein there is no air gap between the distal lens surface and the first surface of the flow cell (Hitachi teaches that the immersion objective is immersed into immersion fluid such that the is no air gap; [14, 15] Fig. 2. The immersion fluid location/region of space between the flow cell and the objective is considered a reservoir as it is a place where fluid collects. Hitachi also teaches a device that constantly supplies immersion medium between the flow cell and the objective lens in order to ensure full immersion to create a quality image; [23-28]. Hitachi also teaches in Figure 4 that shows the liquid supply of figure 3 [22], that there is a reservoir formed from the black sidewalls where the fluid and reservoir are above the top of the substrate; Fig. 4); and
an x-y translation stage configured to translate one of the immersion objective or the flow cell relative to the other of the immersion objective or the flow cell during imaging and while the immersion objective is at least partially immersed in the reservoir such that the immersion objective moves through the fluid in the reservoir during imaging (Hitachi teaches an xy stage that moves the stage and objective relative to each other, and would therefore move the objective through fluid; [19], Fig. 3. Further, how the stage is configured to operate is a matter of intended use/ function. Additionally, Hitachi teaches that the objective is also moves up and down within the fluid in order to image; [19], Fig. 2a-b).
Note: The instant Claims contain a large amount of functional language (ex: “configured to…”). However, functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114 and 2173.05(g)). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims.
As to claim 16, Hitachi teaches the imaging system of claim 15, further comprising a z-translation stage configured to vertically translate one of the immersion objective or the flow cell relative to the other of the immersion objective or the flow cell (Hitachi teaches measuring the bottom surface of the upper plate; [14-15], Fig. 2a. Hitachi teaches a z-stage which moves the object or lens up and down such that the vertical distance is capable of changing; [19, 24]).
As to claim 17, Hitachi teaches the imaging system of claim 15, wherein the system is configured to change from the first configuration to the second configuration by vertically translating one of the immersion objective or the flow cell relative to the other of the immersion objective or the flow cell by a distance substantially equal to a height of the fluid passageway (Hitachi teaches measuring the bottom surface of the upper plate; [14-15], Fig. 2a. Hitachi teaches the distance remains unchanged where in Fig. 2a the fluid distance is the top and where in Fig. 2b the fluid distance is the top fluid portion as well as the fluid passageway/flow channel portion; [14-15], Fig. 2a/b. Hitachi teaches a z-stage which moves the object or lens up and down such that the vertical distance is capable of changing; [19, 24]).
As to claim 19, Hitachi teaches the imaging system of claim 15, wherein the first surface is an interior surface of the first substrate, the second surface is an interior surface of the second substrate, and the first and second surfaces facing each other across the fluid passageway (Hitachi teaches observing the bottom surface of the upper plate and the top surface of the lower plate; [14-15], Fig. 2a/b).
As to claim 20, Hitachi teaches the imaging system of claim 19, further comprising a radiation source configured to stimulate emitted radiation from the analytes associated with the first and second surfaces (Hitachi teaches LED radiation sources; [21]).
As to claim 21, Hitachi teaches the imaging system of claim 20, wherein the first substrate is substantially transparent to radiation from the radiation source and substantially transparent to the emitted radiation from the analytes associated with the first and second surfaces (Hitachi teaches glass which is transparent; [14]).
As to claim 22, Hitachi teaches the imaging system of claim 15, wherein the reservoir and the fluid extend to walls on sides of the first substrate (Hitachi teaches that the immersion objective is immersed into immersion fluid such that the is no air gap; [14, 15] Fig. 2. The immersion fluid location/region of space between the flow cell and the objective is considered a reservoir as it is a place where fluid collects. Hitachi also teaches a device that constantly supplies immersion medium between the flow cell and the objective lens in order to ensure full immersion to create a quality image; [23-28]. Hitachi also teaches in Figure 4 that shows the liquid supply of figure 3 [22], that there is a reservoir formed from the black sidewalls where the fluid and reservoir are above the top of the substrate; Fig. 4).
As to claim 24, Hitachi teaches the imaging system of claim 22, wherein the fluid in the reservoir has substantially the same index of refraction as a fluid in the fluid passageway (Hitachi teaches that the immersion medium in the fluid reservoir and the solution in the flow passage is the same; [14-15]).
As to claim 37, Hitachi teaches the imaging system of claim 22 further comprising a fluid monitoring and delivery sub-system configured to maintain the fluid of the reservoir at a desired level (Hitachi teaches detecting the level via capacitance and filling the space when necessary; [26, 31]).
As to claim 38, Hitachi teaches the imaging system of claim 15 wherein the immersion objective is configured to reduce turbulence in the fluid in which the immersion objective is at least partially immersed during movement of the immersion objective relative to the fluid in which the immersion objective is at least partially immersed (Hitachi teaches the immersion lens with a flat surface at the bottom, which would reduce turbulence, and where the immersion lens is immersed during movement; [14, 15, 19-28] Fig. 2. Additionally, how the immersion objective is operated is a matter of intended use and if the objective (or the corresponding stage) is moved slowly, which the prior art is capable of, then the slower movement would reduce turbulence compared to faster movement).
As to claim 39, Hitachi teaches the imaging system of claim 38 wherein the immersion objective comprises a flat distal surface (Hitachi teaches that the distal surface is flat; Fig. 2-4).
As to claim 41, Hitachi teaches the imaging system of claim 15 wherein the immersion objective comprises an optical axis; wherein a first optical path along the optical axis between a distal end of the objective and the first surface when the imaging system is in the first configuration is equivalent or substantially equivalent to a second optical path along the optical axis between the distal end of the objective and the second surface when the imaging system is in the second configuration (Hitachi teaches the first optical path in fig. 2a which is along the same axis as the optical path in fig. 2b, where the vertical movement moves the objective/stage along the optical path/axis; [14, 15, 19]. Further, how the objective/stage is moved is related to intended use and Hitachi teaches XYZ movement and would be capable of moving the objective along any path/axis).
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hitachi et al (Translation of JP6286183B2; hereinafter “Hitachi”) in view of Buermann et al (US 20130260372; hereinafter “Buermann”; already of record).
As to claim 18, Hitachi teaches the imaging system of claim 17, where the system can focus on the first surface when the system is in the first configuration and focus on the second surface when the system is in the second configuration (Hitachi; [14-15] and see claims 17 above).
Hitachi does not specifically teach the an autofocus sub- system. However, Buermann teaches the analogous art of imaging flow cells (Buermann; [50]) with an autofocus sub-system (Buermann; [60]). It would have been obvious to one of ordinary skill in the art to have modified the imaging system of Hitachi to have included an autofocus system as in Buermann because Buermann teaches that autofocus helps to achieve automatic focusing (Buermann; [62]), and one of ordinary skill in the art would recognize the advantage of automatic focusing in saving user time and effort and also in helping to automate the imaging process.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Hitachi et al (Translation of JP6286183B2; hereinafter “Hitachi”) in view of Komatsu et al (US 20050179997; hereinafter “Komatsu”; already of record).
As to claim 36, Hitachi teaches the imaging system of claim 22, with the reservoir having a depth (Hitachi; Figs. 2-4).
Hitachi does not specifically teach a depth of the fluid in the reservoir is 200- 500 micrometers. However, Komatsu teaches the analogous art of an immersion lens where when the immersion working distance is less than 100 um, then the objective may break the substrate by becoming too close, and where when the working distance is greater than 500 um then it is difficult to image with high power and resolution (Komatsu; [70]). Therefore, it would have been obvious to have modified the fluid depth in the reservoir in Hitachi to be greater than 100 um and less than 500 um as in Komatsu, which substantially overlaps the claimed range, because Hitachi teaches the advantage of ensuring that the distance is large enough such that the substrate is not broken while also not too large to make high power/resolution images difficult (Komatsu; [70]). Overlapping ranges are prima facie obviousness (MPEP 2144.05). Alternatively, the depth of the reservoir is a result effective variable that is dependent on either the working distance of the objective lens or the flow cell thickness. Since the working distance decreases as magnification increases, then the depth of the reservoir would depend on the magnification strength, and it would have been obvious to one of ordinary skill in the art to have used a reservoir depth of between 200-500 um for objective lenses with working distances around 100um such as objective lenses at 40x-60x, since this would provide enough immersion for the lens to operate without wasting immersion fluid.
Claims 40, 45 are rejected under 35 U.S.C. 103 as being unpatentable over Hitachi et al (Translation of JP6286183B2; hereinafter “Hitachi”) in view of Thor Labs (https://web.archive.org/web/20201026084111/https://www.thorlabs.com/newgrouppage9.cfm?objectgroup_id=9922; published 10/26/20; hereinafter “Thor”).
As to claim 40, Hitachi teaches the imaging system of claim 38 wherein an immersed portion of the immersion objective is immersed in the fluid (Hitachi; Figs. 2-4).
Hitachi does not teach the tip of the objective has an un-tapered geometry configured to increase laminar flow. However, Thor teaches the analogous art of objective lenses that can be used for various light wavelengths (Thor; p. 1) where the objective is not tapered at the end (Thor; p. 1. Further, what the untapered region does is a matter of intended use, and Thor would be capable of increasing laminar flow compared to a device that was configured with protrusions to decrease laminar flow). It would have been obvious to one of ordinary skill in the art to have modified the shape of the tip of the immersed objective lens of Hitachi to have been flat as in Thor because Thor teaches that flat objectives are known for long working distances (Thor; p. 1-2). Further, it would have been obvious to change the shape of the objective of Hitachi to have been flat and untapered as in Thor to provide the advantage of a long working distance lens since it has been held that changes in shape are not patentably distinct from prior art (MPEP 2144.04 IV).
As to claim 45, Hitachi teaches the imaging system of claim 40 wherein the reservoir and the fluid extend to walls on sides of the first substrate (Hitachi teaches that the immersion objective is immersed into immersion fluid such that the is no air gap; [14, 15] Fig. 2. The immersion fluid location/region of space between the flow cell and the objective is considered a reservoir as it is a place where fluid collects. Hitachi also teaches a device that constantly supplies immersion medium between the flow cell and the objective lens in order to ensure full immersion to create a quality image; [23-28]. Hitachi also teaches in Figure 4 that shows the liquid supply of figure 3 [22], that there is a reservoir formed from the black sidewalls where the fluid and reservoir are above the top of the substrate; Fig. 4).
Claims 15-17, 19-24, 37-39, 41 are rejected under 35 U.S.C. 103 as being unpatentable over Hitachi et al (Translation of JP6286183B2; hereinafter “Hitachi”; already of record) in view of Beckett et al (US 10512911; hereinafter “Beckett”).
As to claim 15, Hitachi teaches an imaging system (Hitachi; [1, 11-20]), comprising:
a flow cell, the flow cell comprising a first substrate including a first surface, a second substrate including a second surface, and a fluid passageway between the first surface and the second surface (Hitachi teaches a flow cell with upper substrate 201 and lower substrate 204 and a fluid pathway therebetween; [14], Fig. 2a/b);
an imager, the imager comprising an immersion objective, the immersion objective comprising a distal lens surface, the immersion objective at least partially immersed in a fluid (Hitachi teaches an immersion objective lens 202; [14-15], Fig. 2);
wherein, when in a first configuration, the system is configured to image emitted radiation from analytes associated with the first surface, with the distal lens surface spaced by a first vertical distance from the first surface, the first vertical distance including a fluid segment and a substrate segment (Hitachi teaches measuring the bottom surface of the upper plate; [14-15], Fig. 2a. Hitachi teaches a z-stage which moves the object or lens up and down such that the vertical distance is capable of changing; [19, 24]);
wherein, when in a second configuration, the system is configured to image emitted radiation from analytes associated with the second surface, with the distal lens surface spaced by a second vertical distance from the second surface, the second vertical distance including fluid segments and a substrate segment (Hitachi teaches measuring the top surface of the lower plate; [14-15], Fig. 2b);
wherein the first vertical distance is substantially the same as the second vertical distance, and wherein the fluid segment of the first vertical distance is substantially the same as the fluid segments of the second vertical distance (Hitachi teaches the distance remains unchanged where in Fig. 2a the fluid distance is the top and where in Fig. 2b the fluid distance is the top fluid portion as well as the fluid passageway/flow channel portion; [14-15], Fig. 2a/b);
wherein the fluid is retained in a reservoir covering a top of the first substrate, the fluid covering the top of the first substrate, wherein there is no air gap between the distal lens surface and the first surface of the flow cell (Hitachi teaches that the immersion objective is immersed into immersion fluid such that the is no air gap; [14, 15] Fig. 2. The immersion fluid location/region of space between the flow cell and the objective is considered a reservoir as it is a place where fluid collects. Hitachi also teaches a device that constantly supplies immersion medium between the flow cell and the objective lens in order to ensure full immersion to create a quality image; [23-28]. Hitachi also teaches in Figure 4 that shows the liquid supply of figure 3 [22], that there is a reservoir formed from the black sidewalls where the fluid and reservoir are above the top of the substrate; Fig. 4); and
an x-y translation stage configured to translate one of the immersion objective or the flow cell relative to the other of the immersion objective or the flow cell during imaging and while the immersion objective is at least partially immersed in the reservoir such that the immersion objective moves through the fluid in the reservoir during imaging (Hitachi teaches an xy stage that moves the stage and objective relative to each other, and would therefore move the objective through fluid; [19], Fig. 3. Further, how the stage is configured to operate is a matter of intended use/ function. Additionally, Hitachi teaches that the objective is also moves up and down within the fluid in order to image; [19], Fig. 2a-b).
Note: The instant Claims contain a large amount of functional language (ex: “configured to…”). However, functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114 and 2173.05(g)). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims.
If it is deemed that modified Hitachi does not teach a fluid in a reservoir or moving the objective through the fluid in the reservoir during imaging, then Beckett teaches the analogous art of an immersion objective, and a fluid in a reservoir or moving the objective through the fluid in the reservoir during imaging (Beckett teaches that the objective detector 101 moves relative to the sample; col. 10 line 4-27, col. 11 line 65-col. 12 line 7. Beckett teaches the objective in fluid in the reservoir 115 which can have fluid disposed across the entire area as alternative to just fluid in a local region; col. 12 line 6-19, Fig. 1 A.). It would have been obvious to one of ordinary skill in the art to have modified the immersion objective that has a moving stage and detects in fluid on a reservoir stage of Hitachi to have included a reservoir with fluid across the entire area such that the objective moves through the fluid as in Beckett because Beckett teaches that fluid medium across the entire area of a reservoir is an obvious variant of just fluid in a localized region (Beckett; col. 12 line 6-19).
As to claim 16, Hitachi teaches the imaging system of claim 15, further comprising a z-translation stage configured to vertically translate one of the immersion objective or the flow cell relative to the other of the immersion objective or the flow cell (Hitachi teaches measuring the bottom surface of the upper plate; [14-15], Fig. 2a. Hitachi teaches a z-stage which moves the object or lens up and down such that the vertical distance is capable of changing; [19, 24]).
As to claim 17, Hitachi teaches the imaging system of claim 15, wherein the system is configured to change from the first configuration to the second configuration by vertically translating one of the immersion objective or the flow cell relative to the other of the immersion objective or the flow cell by a distance substantially equal to a height of the fluid passageway (Hitachi teaches measuring the bottom surface of the upper plate; [14-15], Fig. 2a. Hitachi teaches the distance remains unchanged where in Fig. 2a the fluid distance is the top and where in Fig. 2b the fluid distance is the top fluid portion as well as the fluid passageway/flow channel portion; [14-15], Fig. 2a/b. Hitachi teaches a z-stage which moves the object or lens up and down such that the vertical distance is capable of changing; [19, 24]).
As to claim 19, Hitachi teaches the imaging system of claim 15, wherein the first surface is an interior surface of the first substrate, the second surface is an interior surface of the second substrate, and the first and second surfaces facing each other across the fluid passageway (Hitachi teaches observing the bottom surface of the upper plate and the top surface of the lower plate; [14-15], Fig. 2a/b).
As to claim 20, Hitachi teaches the imaging system of claim 19, further comprising a radiation source configured to stimulate emitted radiation from the analytes associated with the first and second surfaces (Hitachi teaches LED radiation sources; [21]).
As to claim 21, Hitachi teaches the imaging system of claim 20, wherein the first substrate is substantially transparent to radiation from the radiation source and substantially transparent to the emitted radiation from the analytes associated with the first and second surfaces (Hitachi teaches glass which is transparent; [14]).
As to claim 22, Hitachi teaches the imaging system of claim 15, wherein the reservoir and the fluid extend to walls on sides of the first substrate (Hitachi teaches that the immersion objective is immersed into immersion fluid such that the is no air gap; [14, 15] Fig. 2. The immersion fluid location/region of space between the flow cell and the objective is considered a reservoir as it is a place where fluid collects. Hitachi also teaches a device that constantly supplies immersion medium between the flow cell and the objective lens in order to ensure full immersion to create a quality image; [23-28]. Hitachi also teaches in Figure 4 that shows the liquid supply of figure 3 [22], that there is a reservoir formed from the black sidewalls where the fluid and reservoir are above the top of the substrate; Fig. 4. Additionally, the modification of the reservoir stage of Hitachi to be the reservoir with fluid across the entire area such that the objective moves through the fluid as in Beckett has already been discussed above. Beckett teaches that fluid medium across the entire area of a reservoir from wall to wall of 115; col. 12 line 6-19).
As to claim 24, Hitachi teaches the imaging system of claim 22, wherein the fluid in the reservoir has substantially the same index of refraction as a fluid in the fluid passageway (Hitachi teaches that the immersion medium in the fluid reservoir and the solution in the flow passage is the same; [14-15]).
As to claim 37, Hitachi teaches the imaging system of claim 22 further comprising a fluid monitoring and delivery sub-system configured to maintain the fluid of the reservoir at a desired level (Hitachi teaches detecting the level via capacitance and filling the space when necessary; [26, 31]).
As to claim 38, Hitachi teaches the imaging system of claim 15 wherein the immersion objective is configured to reduce turbulence in the fluid in which the immersion objective is at least partially immersed during movement of the immersion objective relative to the fluid in which the immersion objective is at least partially immersed (Hitachi teaches the immersion lens with a flat surface at the bottom, which would reduce turbulence, and where the immersion lens is immersed during movement; [14, 15, 19-28] Fig. 2. Additionally, how the immersion objective is operated is a matter of intended use and if the objective (or the corresponding stage) is moved slowly, which the prior art is capable of, then the slower movement would reduce turbulence compared to faster movement).
As to claim 39, Hitachi teaches the imaging system of claim 38 wherein the immersion objective comprises a flat distal surface (Hitachi teaches that the distal surface is flat; Fig. 2-4).
As to claim 41, Hitachi teaches the imaging system of claim 15 wherein the immersion objective comprises an optical axis; wherein a first optical path along the optical axis between a distal end of the objective and the first surface when the imaging system is in the first configuration is equivalent or substantially equivalent to a second optical path along the optical axis between the distal end of the objective and the second surface when the imaging system is in the second configuration (Hitachi teaches the first optical path in fig. 2a which is along the same axis as the optical path in fig. 2b, where the vertical movement moves the objective/stage along the optical path/axis; [14, 15, 19]. Further, how the objective/stage is moved is related to intended use and Hitachi teaches XYZ movement and would be capable of moving the objective along any path/axis).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hitachi et al (Translation of JP6286183B2; hereinafter “Hitachi”) in view of Beckett et al (US 10512911; hereinafter “Beckett”) in view of Buermann et al (US 20130260372; hereinafter “Buermann”; already of record).
As to claim 18, Hitachi teaches the imaging system of claim 17, where the system can focus on the first surface when the system is in the first configuration and focus on the second surface when the system is in the second configuration (Hitachi; [14-15] and see claims 17 above).
Modified Hitachi does not specifically teach the an autofocus sub- system. However, Buermann teaches the analogous art of imaging flow cells (Buermann; [50]) with an autofocus sub-system (Buermann; [60]). It would have been obvious to one of ordinary skill in the art to have modified the imaging system of modified Hitachi to have included an autofocus system as in Buermann because Buermann teaches that autofocus helps to achieve automatic focusing (Buermann; [62]), and one of ordinary skill in the art would recognize the advantage of automatic focusing in saving user time and effort and also in helping to automate the imaging process.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Hitachi et al (Translation of JP6286183B2; hereinafter “Hitachi”) in view of Beckett et al (US 10512911; hereinafter “Beckett”) in view of Komatsu et al (US 20050179997; hereinafter “Komatsu”; already of record).
As to claim 36, modified Hitachi teaches the imaging system of claim 22, with the reservoir having a depth (Hitachi; Figs. 2-4).
Modified Hitachi does not specifically teach a depth of the fluid in the reservoir is 200- 500 micrometers. However, Komatsu teaches the analogous art of an immersion lens where when the immersion working distance is less than 100 um, then the objective may break the substrate by becoming too close, and where when the working distance is greater than 500 um then it is difficult to image with high power and resolution (Komatsu; [70]). Therefore, it would have been obvious to have modified the fluid depth in the reservoir in modified Hitachi to be greater than 100 um and less than 500 um as in Komatsu, which substantially overlaps the claimed range, because Hitachi teaches the advantage of ensuring that the distance is large enough such that the substrate is not broken while also not too large to make high power/resolution images difficult (Komatsu; [70]). Overlapping ranges are prima facie obviousness (MPEP 2144.05). Alternatively, the depth of the reservoir is a result effective variable that is dependent on either the working distance of the objective lens or the flow cell thickness. Since the working distance decreases as magnification increases, then the depth of the reservoir would depend on the magnification strength, and it would have been obvious to one of ordinary skill in the art to have used a reservoir depth of between 200-500 um for objective lenses with working distances around 100um such as objective lenses at 40x-60x, since this would provide enough immersion for the lens to operate without wasting immersion fluid.
Claims 40, 45 are rejected under 35 U.S.C. 103 as being unpatentable over Hitachi et al (Translation of JP6286183B2; hereinafter “Hitachi”) in view of Beckett et al (US 10512911; hereinafter “Beckett”) in view of Thor Labs (https://web.archive.org/web/20201026084111/https://www.thorlabs.com/newgrouppage9.cfm?objectgroup_id=9922; published 10/26/20; hereinafter “Thor”).
As to claim 40, modified Hitachi teaches the imaging system of claim 38 wherein an immersed portion of the immersion objective is immersed in the fluid (Hitachi; Figs. 2-4).
Modified Hitachi does not teach the tip of the objective has an un-tapered geometry configured to increase laminar flow. However, Thor teaches the analogous art of objective lenses that can be used for various light wavelengths (Thor; p. 1) where the objective is not tapered at the end (Thor; p. 1. Further, what the untapered region does is a matter of intended use, and Thor would be capable of increasing laminar flow compared to a device that was configured with protrusions to decrease laminar flow). It would have been obvious to one of ordinary skill in the art to have modified the shape of the tip of the immersed objective lens of Hitachi to have been flat as in Thor because Thor teaches that flat objectives are known for long working distances (Thor; p. 1-2). Further, it would have been obvious to change the shape of the objective of modified Hitachi to have been flat and untapered as in Thor to provide the advantage of a long working distance lens since it has been held that changes in shape are not patentably distinct from prior art (MPEP 2144.04 IV).
As to claim 45, modified Hitachi teaches the imaging system of claim 40 wherein the reservoir and the fluid extend to walls on sides of the first substrate (Hitachi teaches that the immersion objective is immersed into immersion fluid such that the is no air gap; [14, 15] Fig. 2. The immersion fluid location/region of space between the flow cell and the objective is considered a reservoir as it is a place where fluid collects. Hitachi also teaches a device that constantly supplies immersion medium between the flow cell and the objective lens in order to ensure full immersion to create a quality image; [23-28]. Hitachi also teaches in Figure 4 that shows the liquid supply of figure 3 [22], that there is a reservoir formed from the black sidewalls where the fluid and reservoir are above the top of the substrate; Fig. 4. Additionally, the modification of the reservoir stage of Hitachi to be the reservoir with fluid across the entire area such that the objective moves through the fluid as in Beckett has already been discussed above. Beckett teaches that fluid medium across the entire area of a reservoir from wall to wall of 115; col. 12 line 6-19).).
Response to Arguments
Applicant’s arguments filed on 10/23/25 have been considered but are moot because the arguments are towards the amended claims and not the current rejection. Based on the claim amendments, the examiner has added a new grounds of rejection to address the amendments.
However, because the examiner is relying on the same prior art then the examiner will address applicants arguments in order to advance prosecution. Applicants arguments have been considered and are not persuasive.
Applicants argue on pages 9-10 that Hitachi does not teach an imaging system in which a fluid is retained in a reservoir covering the top of a first substrate or a system in which the objective moves through the fluid during imaging. However, the examiner respectfully disagrees. Hitachi teaches fluid retained in a reservoir covering the top of the substrate (Hitachi teaches that the immersion objective is immersed into immersion fluid such that the is no air gap; [14, 15] Fig. 2. The immersion fluid location/region of space between the flow cell and the objective is considered a reservoir as it is a place where fluid collects. Hitachi also teaches a device that constantly supplies immersion medium between the flow cell and the objective lens in order to ensure full immersion to create a quality image; [23-28]. Hitachi also teaches in Figure 4 that shows the liquid supply of figure 3 [22], that there is a reservoir formed from the black sidewalls where the fluid and reservoir are above the top of the substrate; Fig. 4); and an x-y translation stage configured to translate one of the immersion objective or the flow cell relative to the other of the immersion objective or the flow cell during imaging and while the immersion objective is at least partially immersed in the reservoir such that the immersion objective moves through the fluid in the reservoir during imaging (Hitachi teaches an xy stage that moves the stage and objective relative to each other, and would therefore move the objective through fluid; [19], Fig. 3. Further, how the stage is configured to operate is a matter of intended use/ function. Additionally, Hitachi teaches that the objective is also moves up and down within the fluid in order to image; [19], Fig. 2a-b). However, functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114 and 2173.05(g)). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims. Further, Hitachi teaches that as the objective moves through the fluid, that the fluid spreads over the surface due to surface tension, where the fluid then needs to be replaced/supplied further (Hitachi; [34]) such that the objective would move through the water and some of the water that had surface tension with the top surface of the flow cell would be static with respect to the flow cell while the objective moved through it.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Benjamin R Whatley whose telephone number is (571)272-9892. The examiner can normally be reached on Mon- Fri 8am-5pm.
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/Benjamin R Whatley/Primary Examiner, Art Unit 1798