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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on July 16, 2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 19-36 have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant has amended independent claim 9 to remove limitations regarding the optical axis of the claimed objective lens and argued that the amended claim is in condition for allowance. As detailed below, the Examiner contends that the limitations of the instant claims are taught by the combination of Keller et al., (US 2015/0098126) in view of Hausmann et al., (US 7,342,717) and further in view of Callahan et al., (US 2011/0216953). Because reference to Hausmann et al., is newly cited, the Examiner will not argue the merits of its teachings here but will instead rely on the rejection detailed below. Therefore, in light of the teachings of the prior art, the Examiner contends that the limitations of the instant claims are taught by the references cited below, thus the claims are not in condition for allowance.
Claim Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). 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. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention is defined by the positively claimed elements, the structural elements listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
For claims 26, 27, 35, and 36, the Examiner notes that the sample is not a structural element of the claimed system, but instead represents the material worked upon by the system.
Claim Rejections - 35 USC § 112
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.
Claims 32-34 are 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. Claims 32-34 recite one or more light sources producing light having red, green, blue, and yellow colors. The instant specification does not recite one or more light sources capable of producing red, green, blue, and yellow colors, thus the limitations of claims 32-34 are not supported by the instant specification. As such, claims 32-34 all recite new matter.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries 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.
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.
Claim(s) 9-10, 14-15 and 19-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keller et al., (US 2015/0098126) in view of Hausmann et al., (US 7,342,717), and further in view of Callahan et al., (US 2011/0216953).
Regarding claims 9 and 30, Keller et al., teach a microscope system for imaging a live biological specimen (paragraph 0026) comprising a specimen holder (paragraphs 0028, 0153, 0154), a perfusion system with a pump (paragraph 0159), an optical system (paragraphs 0139, 0386) having four image sensors (paragraph 0327), an objective lens (paragraphs 0010, 0011, 0029, 0142, 0146), one or more light sources (paragraphs 0128, 0129) and a controller (graphics processing unit, paragraph 0163). Keller et al., do not explicitly teach first and second sample holders; however, the Examiner is reading this limitation as a duplication of parts which would have been obvious to one of ordinary skill in the art (MPEP 2144.04 VIB). As set forth in the MPEP, a duplication of parts has no patentable significance absent a new and unexpected result (MPEP 2144.04 VIB). As such, one of ordinary skill in the art would have found it obvious to modify Keller et al., to include a second specimen holder as a means of analyzing multiple specimens. Keller et al., do not teach a system having a single objective lens.
Hausmann et al., teach a wave field microscope system wherein the system comprises a single objective lens having a single optical axis (column 23 lines 27-43). Hausmann et al., teach that it is advantageous to utilize a single objective lens as a means of generating plane wave fields in more than one dimension (column 7 lines 40-44, column 23 lines 36-43).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Keller et al., to utilize a single objective lens as a means of generating plane wave fields in more than one dimension as taught by Hausmann et al. Keller et al., in view of Hausmann et al., do not teach one or more reservoirs and first and second dispensers.
Callahan et al., teach a system for performing visual optical microscopy comprising syringe pumps that deliver reagents to a biological sample wherein the reagents are stored in one or more reservoirs and delivered through fluid channels (paragraphs 0056, 0095). Callahan et al., teach that it is advantageous to provide fluid channels connected to reservoirs as a means of applying controlled stimulations, perturbations, and interrogations to a biological sample (paragraph 0056).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Keller et al., to include first and second fluid dispensers coupled to a pump and reservoirs in order to apply controlled stimulations, perturbations, and interrogations to a biological sample as taught by Callahan et al.
Regarding claim 10, Keller et al., teach a stage for the sample holder (paragraphs 0153, 0154, 0159), and a motion control system that moves the stage in X, Y, Z, directions (paragraphs 0106, 0139, 0386).
Regarding claims 12, and 19 Keller et al., teach a temperature control system (paragraph 0155).
Regarding claims 13-15, Keller et al., teach an electronics controller capable of executing user-space software for real-time image analysis (paragraphs 0163, 0164).
Regarding claim 20, Keller et al., teach a filter (paragraph 0146) which prevents unwanted wavelengths from reaching the detectors (paragraph 0146).
Regarding claims 21 and 22, Keller et al., teach lasers as the light source (paragraphs 0128-0132) wherein the lasers have a autofocus module (paragraphs 0138, 0142).
Regarding claim 23, Keller et al., teach an air objective (paragraph 0138).
Regarding claim 24, Keller et al., teach a water immersion objective (paragraph 0148).
Regarding claim 25, Keller et al., teach translating the objective along the z-axis (paragraph 0304).
Regarding claims 26, 27, 35, and 36, the Examiner notes that the sample is not a structural element of the system, but instead represent the material worked upon by the claimed system (MPEP 2115). As such, the sample is given the appropriate patentable weight in the claim.
Regarding claim 28, Keller et al., in view of Callahan et al., teach a system that performs an indistinguishable function to that of claim 28, and thus the system of Keller et al., in view of Callahan et al., would be configured for sequencing a plurality of biomolecules.
Regarding claim 29, Keller et al., teach the controller capable of performing real-time analysis on a plurality of images (paragraph 0173).
Regarding claim 31, Keller et al., teach a light source capable of producing wavelengths of 488 nm and 642 nm (paragraph 0132). The Examiner notes that a light source capable of producing wavelengths of 488 and 642 nm would be capable of producing wavelengths of 480 m and 640 nm.
Regarding claims 32-34, Keller et al., teach a light source identical to that of the instant specification (laser, paragraph 0128). The Examiner notes that the claims are being read in light of the rejection under 35 U.S.C. 112(a) in which the claims have been deemed to contain new matter.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keller et al., (US 2015/0098126) in view of Hausmann et al., (US 7,342,717), in view of Callahan et al., (US 2011/0216953) as applied to claim 10 above, and further in view of Betzig et al., (US 2013/0286181).
Regarding claim 11, Keller et al., in view of Hausmann et al., in view of Callahan et al., do not teach a field programmable gate array.
Betzig et al., teach a microscopy system wherein process steps are implemented with a field programmable gate array (paragraph 0194). The Examiner is reading this combination as applying a known technique to a known device to yield predictable results which would have been obvious to one of ordinary skill in the art. Reference to Betzig et al., teach that field programmable gate arrays are utilized to implement process steps in a microscopy system, thus one of ordinary skill in the art would have found it obvious to utilize a field programmable gate array as taught by Betzig et al. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Keller et al., in view of Hausmann et al., in view of Callahan et al., to utilize a field programmable gate array as taught by Betzig et al., as applying a known technique to a known device to yield predictable results requires only routine skill in the art.
Claim(s) 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keller et al., (US 2015/0098126) in view of Hausmann et al., (US 7,342,717), in view of Callahan et al., (US 2011/0216953) as applied to claim 9 above, and further in view of Frisen et al., (US 2019/0203275).
Regarding claims 16 and 17, Keller et al., in view of Hausmann et al., in view of Callahan et al., do not teach first and second closed flow cells coupled to a pump.
Frisen et al., teach a method of tagging nucleic acids wherein a specimen a closed flow cell having an inlet and an outlet for delivering and removing reagents (paragraph 0036). Frisen et al., teach that it is advantageous to provide a closed flow cell as a means of allowing convenient delivery of reagents to a biological specimen (paragraph 0091).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Keller et al., in view of Hausmann et al., in view of Callahan et al., wherein a closed flow cell is utilized in order to allow convenient delivery of reagents to the specimen as taught by Frisen et al.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keller et al., (US 2015/0098126) in view of Hausmann et al., (US 7,342,717), in view of Callahan et al., (US 2011/0216953) as applied to claim 9 above, and further in view of Clarke et al., (US 2006/0000470).
Regarding claim 18, Keller et al., in view of Hausmann et al., in view of Callahan et al., do not teach fluid dispensers configured for independent operation.
Clarke et al., teach an apparatus for producing a pharmaceutical comprising first and second dispensing modules that operate independently (paragraphs 0118, 0119, 0122). Clarke et al., teach that it is advantageous to utilize the dispensing modules independently as a means of accommodating different arrays of tablet positions on a holding tray (paragraph 0119).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Keller et al., in view of Hausmann et al., in view of Callahan et al., wherein the first and second dispensers operate independently in order to accommodate different arrays of dispensing positions as taught by Clarke et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6.
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/DWAN A GERIDO/Examiner, Art Unit 1797 /LYLE ALEXANDER/Supervisory Patent Examiner, Art Unit 1797
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