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 Amendment
2. The present office action is made in response to the amendment filed by applicant on 03/21/2026. It is noted that in the amendment, applicant has made changes to the drawings, the specification and the claims. There is not any change being made to the abstract.
A) Regarding to the drawings, applicant has submitted two replacement sheets contained figures 1-4;
B) Regarding the specification, applicant has added a new paragraph regarding “BRIEF SUMMARY OF THE INVENTION” into page 3 of the specification and made changes to pages 8, 17, 19-20 and 23; and
C) Regarding to the claims, applicant has amended claims 1-4.
Response to Arguments
3. The amendments to the drawings, the specification and the claims as provided in the amendment of 03/21/2026 and applicant's arguments provided in the mentioned amendment, pages 9-13, have been fully considered and resulted the following conclusions.
A) Regarding the claims, because applicant has not added/canceled any claim into/from the application, thus the pending claims are still claims 1-13 in which claims 1-4 and 10 are examined in the present office action, and claims 5-9 and 11-13 have been withdrawn from further consideration as being directed to non-elected inventions.
Applicant should note that the non-elected claims will be rejoined if the linking claim 1 is later found as an allowable claim.
B) Regarding the objections to the drawings set forth in the office action of 09/15/2025, the amendments to the drawings as provided in the amendment of 03/21/2026 and applicant’s arguments provided in the mentioned amendment, page 10, have been fully considered and resulted the following conclusions:
B1) the amendments to the drawings as provided in the amendment of 03/21/2026 are sufficient to overcome the objections to the drawings for the reason set forth in element #7 in pages 3-4 of the office action of 09/15/2025;
B2) the amendments to the drawings as provided in the amendment of 03/21/2026 are sufficient to overcome the objections to the drawings for the reason that the specification does not support for the references of “260” and “330” as set forth in element #8 in page 4 of the office action of 09/15/2025.
However, the amendments to the drawings as provided in the mentioned amendment does not address the objection to the drawings for the reason that the specification does not support for the references of “340” as set forth in element #8 in page 4 of the mentioned office action.
B3) the two replacement sheets contained figures 1-4 as filed in the amendment of 03/21/2026 is objected to as provided in the present office action.
C) Regarding the objections to the specification set forth in the office action of 09/15/2025, the amendments to the specification as provided in the amendment of 03/21/2026 has NOT been entered, and applicant’s arguments provided in the mentioned amendment, page 10, have been fully considered but they are not persuasive. The objections to the specification set forth in the mentioned office action are repeated in the present office action.
The amendments to the specification as provided in the amendment of 03/21/2026 has NOT been entered because it does not comply with the requirement of Rule 37 CFR 1.121. Applicant should note that the text of any new paragraph(s)/section(s) added into the specification must not be underlined. In the amendments to the specification provided on 03/21/2026, applicant has underlined the new paragraph of “BRIEF SUMMARY OF THE INVENTION”, see amendment in page 2.
D) Regarding the Claim Interpretation set forth in the office action of 09/15/2025, because applicant has not amended the claims and/or provided any argument to overcome the Claim Interpretation, thus the Claim Interpretation set forth in the mentioned office action is repeated in the present office action.
E) Regarding the rejections of claims 1-4 and 10 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the office action of 09/15/2025, the amendments to the claims as provided in the amendment of 03/21/2026 and applicant’s arguments provided in the mentioned amendment, pages 10-11, have been fully considered.
However, the amended claims are now subjected to rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph and new rejections under 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the present office action.
F) Regarding the rejection of claims 1-4 and 10 under 35 U.S.C. 102(a)(1) as being anticipated by Sase (US Patent No. 8,629,382) set forth in the office action of 09/15/2025, the amendments to the claims as provided in the amendment of 03/21/2026 and applicant’s arguments provided in the mentioned amendment, pages 11-13, have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Drawings
4. The two replacement sheets contained figures 1-4 were received on 03/21/2026.
5. As a result of the changes to the drawings, the application now contains a total of twelve sheets of figures 1-18 which includes ten sheets of figures 5-18 as filed on 11/28/2022, and two replacement sheets contained figures 1-4 as filed on 03/21/2026. The mentioned total of twelve sheets of figures 1-18 is objected by the examiner for the following reason(s).
6. The drawings are objected to because the two replacement sheets contained figures 1-4 as filed on 03/21/2026 are objected to because the words/terms appeared in figures 2, 3(b) and 3(c) are so blurred/ unclear that they are so difficult to consider or to arrange the papers for printing or copying.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
7. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the reference of “260” as shown in fig. 1 and the reference of “340” as shown in each of figs. 1 and 9 which references are not mentioned in the description.
Applicant should note the amendments to the specification as provided in the amendment of 03/21/2026 has NOT been entered, see the element C) in the section of “Response to Arguments”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
8. The lengthy specification which was amended by the pre-amendment of 11/28/2022 has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
9. The specification is objected to because it does not have a Summary of the invention.
10. The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
11. The specification is objected to because reference character “110” has been used to designate both a sample plane, see page 9 on line 3, for example, and “a sample” see page 17 on line 11. Appropriate correction is required.
Claim Interpretation
12. 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.
13. 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.
14. 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 “a guide beam generation unit” and “a sample focus measurement unit” as recited in claim 1
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
15. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
16. Claim 3 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claim is rejected because the disclosure, as originally filed, does not provide support for the feature thereof “the guide beam generation unit … the optical axis” as recited in the amended claim 3 on lines 6-7. In particular, the disclosure, as originally filed, does not support for the guide beam generation unit includes a mirror configured to adjust an offset between the guide beam and the optical axis of the objective lens as claimed in the mentioned feature.
17. Claim 3 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claim is rejected because the disclosure does not provide support for the feature thereof “the guide beam generation unit … the optical axis” as recited in the amended claim 3 on lines 6-7. In particular, the disclosure does not support for the guide beam generation unit includes a mirror configured to adjust an offset between the guide beam and the optical axis of the objective lens as claimed in the mentioned feature.
18. 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.
19. Claims 1-4 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a) Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons:
a1) the feature thereof “a guide beam generation unit … toward a sample plane” (lines 7-9) makes the claim indefinite because it is completely unclear form the claim which system/component(s) being used to provide the so-called “excitation light” and the structural relationship(s) between the guide beam generation unit and the system/component(s) used to provide an excitation light so that the guide beam provided by the guide bean generation unit is dependent of excitation light;
a2) ”the guide beam reflected from the sample plane” (line 12) lacks a proper antecedent basis. Applicant should note that while the claim recites “a guide beam” on line 8; however, that “a light beam” is for the one for illuminate/guide to the sample plane, not reflected from the sample plane; and
a3) the features thereof “the sample focus measurement unit … the determined position” (lines 14-17) make the claim indefinite. What does applicant mean by “a position of the received guide beam” (line 15)? How “a change in the determined position” (lines 16-17) is determined? It is completely unclear from the claimed language of the claim to know the so-called “position” of the received guide beam and what reference is used to make a decision about “a change in the determined position”.
For the purpose of examination, the mentioned features are understood as the sample focus measurement unit comprises a sensor/detector for received the received guide beam and a difference in a position of the received light beam in the sensor/detector when the distance between the sample plane and the objective lens is changed and a position of the received light beam in the sensor/detector when the distance between the sample plane and the objective lens is not changed is used to detect a change in distance between the sample plane and the objective lens.
b) Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “wherein the guide beam … the optical axis” (lines 6-8). What “the guide beam” does applicant imply here?
Applicant should note that the base claim 1 recites two “a guide beam” on line 8 and on line 12 wherein the guide beam on line 8 is for light directed to the sample plane and the guide beam on line 12 is for light reflected from the sample plane. Thus, which one is used for the so-called “the guide beam” in claim 3 on line 7?
c) The remaining claims are dependent upon the rejected base claim thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 102
20. 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 (i.e., changing from AIA to pre-AIA ) 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.
21. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
22. Claims 1-2 and 10, as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Annibale et al (US Publication No. 2020/0301124).
Annibale et al discloses a fluorescent microscope having an auto focus apparatus.
a) Regarding present claims 1 and 2, the auto focus apparatus as described in paragraphs [0045]-[0071] and shown in figs. 1-11 comprises the following features:
a1) a guide beam generation unit (110) installed in a light source part of the fluorescent microscope (240) for providing/supplying a guide beam in a direction towards a sample plane (1) wherein the guide beam (111) is independent of excitation light (211);
a2) a beamsplitter (251-252) positioned in an optical path between the guide bean generation unit and the sample plane wherein the beamsplitter is installed obliquely to a travel direction of the guide beam suppled from the guide beam generation unit. It is noted that the beamsplitter is configured to transmit the guide beam toward the sample plane and to reflect a portion of light reflected from the sample plane to a focus measurement unit (120, 121, 130); and
a3) the sample focus measurement unit (120, 121, 130) configured to receive guide beam reflected from the sample plane, to determine a position of the reflected guide beam and to detect a change in distance between the objective lens (221) and the sample plane 91) based on a change in determined position, see paragraphs [0053]-[0071].
b) Regarding present claim 10, a method of utilizing the auto focus apparatus to detect a change/variation in distance between an objective lens and a sample plane is read from the structure of the fluorescent microscope provided by Annibale et al.
Conclusion
23. 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.
24. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571)272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
Prosecution Insights