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 .
Detailed Action
Response to Arguments
Applicant's arguments filed 9-27-2025 have been fully considered but they are not persuasive. The applicant argues that with the amendment that the art no longer meets the limitation, “focusing the forward scattered laser light into a first end of an optical fiber that does not collect side scattered laser light;” because of cited passages of Berezhnyy (Paragraphs 71-73). However, when arguing against a reference, the attorney failed to consider all of the disclosure. First, it is stated that “Laser light modulated by the particle in this way is subsequently focused by objective lens 901 onto refractive optical element 902 which collects the objective lens focused light and projects it onto fiber optic light conveyor 903,” and in this case the modulation referred to can be a by diffraction, refraction, reflection, scattering or absorption and re-emission. Notably in fig. 9 there are no objects labeled 901, 902, or 903. If one looks at figure 9 one can see that the side scattered and fluorescence light is illustrated as outputting from the flow cell in a direction perpendicular from the forward scattered light (this is generally true in these situations). Further, if one were to look at fig. 4 this is generally describing the same optical setup as talked about in regards to fig. 9. There is an objective lens (402) which focuses light and an optical element (403) which then passes it onto a fiber optic light conveyor (405) (Paragraph 43). As is shown this system is collecting light from one side of a flow cell, which in the art is generally the case. Thus, because the side scattered light and forward scattered light are perpendicular to each other one optical system is not collecting both, which again is generally how these machines are designed. Therefore, when the disclosure states, “The fluorescence emissions as well as the diffracted light, refracted light, reflected light, and scattered light may be routed via the fiber optic light conveyor 903 to one or more of the forward scatter detector 930, side scatter detector 935, and the one or more fluorescent light detectors 960a-960f through one or more of the beam splitters 945a-945g, the bandpass filters 950a-950e, the longpass filters 955a-955b, and the fluorescence collection lens 940” this is a general catch all statement about how the machine functions and not a statement saying that only one optical fiber collects both the side scattered light and forward scattered light. Without some form of specialized disclosed objective lens that wraps around the flow cell and gets both side and forward scattered light onto the same optical axis this would not work. Thus, the examiner finds the applicant’s arguments not persuasive and will maintain the rejection.
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 1-10 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.
In claim 1, the applicant has amended the claim with the limitation, “focusing the forward scattered laser light into a first end of an optical fiber that does not collect side scattered laser light;” however there is no specific disclosure in the specification of the amended part of the limitation nor a statement that it is particularly important the optical fiber not collect both side and forward scattered light. Thus, this limitation would be new matter and not supported by the specification.
Claims 2-10 are rejected based on their dependency.
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 (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.
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)(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.
Claim(s) 1-3, 5, & 10 is/are rejected under 35 U.S.C. 102(A)(2) as being anticipated by Berezhnyy (PGPub 2022/0155210) (Berezhnyy).
Regarding Claim 1, Berezhnyy discloses a method comprising:
flowing a cell/particle in a flow cell (925) through an optical axis of an incident laser light (Paragraphs 71 & 72);
striking portions of the cell/particle with the incident laser light to generate forward scattered laser light (Paragraph 73);
focusing the forward scattered laser light into a first end of an optical fiber (903) (Paragraph 73) that does not collect side scattered laser light. The fiber that collects the forward scattered light would be different from the fiber that collects the side scattered light for the reasons the examiner made clear in the response to arguments;
directing the forward scattered laser light towards a second end of the optical fiber (Paragraph 73); and
launching the forward scattered laser light out of the second end of the optical fiber into a sensor subsystem (930) to detect the forward scattered laser light (Paragraph 73).
Regarding Claim 2, Berezhnyy discloses the aforementioned. Further, by its very nature an optical fiber will filter out unwanted scattered light from spatial and angular perspectives since optical fibers only have a limited range of acceptance angles for incoming light.
Regarding Claim 3, Berezhnyy discloses the aforementioned. Further, Berezhnyy discloses filtering the forward scattered laser light into a pass band of wavelengths of forward scattered laser light; and detecting an intensity of the pass band of wavelengths of forward scattered laser light (Paragraph 56).
Regarding Claim 5, Berezhnyy discloses the aforementioned. Further, Berezhnyy discloses receiving the forward scattered laser light out from the second end of the optical fiber (Paragraph 73); focally reimaging the forward scattered laser light into a photodiode detector (Paragraph 76); filtering the focused forward scattered laser light into a pass band of wavelengths of forward scattered laser light into the photodiode detector (Paragraph 56); and detecting an intensity of the pass band of wavelengths of forward scattered laser light (Paragraph 76).
Regarding Claim 10, Berezhnyy discloses the aforementioned. Further, Berezhnyy discloses wherein the photodiode detector is an avalanche photodiode (Paragraph 53).
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) 4, & 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berezhnyy.
Regarding Claim 4, Berezhnyy discloses the aforementioned. Further, Berezhnyy discloses among the wavelengths of the excitation lasers one is 488nm (Paragraph 71). Berezhnyy fails to explicitly disclose wherein the pass band of wavelengths of forward scattered laser light is in a range inclusively between 492 nanometers and 484 nanometers around 488 nanometers;
However, the examiner takes official notice that this would be obvious to one of ordinary skill in the art;
Therefore, it would be obvious to one of ordinary skill at the time the invention was filed to modify Berezhnyy with wherein the pass band of wavelengths of forward scattered laser light is in a range inclusively between 492 nanometers and 484 nanometers around 488 nanometers because forward scattered light would not significantly change wavelength from the excitation laser and one would want to filter out wavelengths that were not from the forward scattered light to reduce noise on the detector.
Regarding Claim 6, Berezhnyy discloses the aforementioned but fails to explicitly disclose adjusting a signal gain of the photodiode detector to detect the intensity of the pass band of wavelengths of the forward scattered laser light;
However, the examiner takes official notice that this would be obvious to one of ordinary skill in the art;
Therefore, it would be obvious to one of ordinary skill at the time the invention was filed to modify Berezhnyy with adjusting a signal gain of the photodiode detector to detect the intensity of the pass band of wavelengths of the forward scattered laser light because this is often done to balance the detection sensitivity of the detector with the noise produced by increasing the gain to receive an optimal signal for detection.
Regarding Claims 7 & 8, Berezhnyy discloses the aforementioned but fails to explicitly disclose prior to the focusing, blocking the incident laser light; and wherein while the cell/particle is outside the optical axis of the incident laser light, blocking the incident laser light from reaching the detector;
However, the examiner takes official notice that this would be obvious to one of ordinary skill in the art;
Therefore, it would be obvious to one of ordinary skill at the time the invention was filed to modify Berezhnyy with prior to the focusing, blocking the incident laser light; and wherein while the cell/particle is outside the optical axis of the incident laser light, blocking the incident laser light from reaching the detector because this would prevent false detections of cells when they are not present.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berezhnyy in view of Kaiser et al (PGPub 2022/0003660) (Kaiser).
Regarding Claim 6, Berezhnyy discloses the aforementioned but fails to explicitly disclose after the striking, blocking the incident laser light, wherein the incident laser light is blocked while the cell/particle is outside the optical axis of the incident laser light;
However, Kaiser teaches after the striking, blocking the incident laser light, wherein the incident laser light is blocked while the cell/particle is outside the optical axis of the incident laser light (Fig. 1(a), Paragraph 209);
Therefore, it would be obvious to one of ordinary skill at the time the invention was filed to modify Berezhnyy with after the striking, blocking the incident laser light, wherein the incident laser light is blocked while the cell/particle is outside the optical axis of the incident laser light because that prevents the non-forwarded scattered light from washing out the signal of the forward scattered light at the detector and improves the signal-to-noise ratio of the detection.
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 JONATHON COOK whose telephone number is (571)270-1323. The examiner can normally be reached 11am-7pm.
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, Kara Geisel can be reached at 571-272-2416. 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.
/JONATHON COOK/Examiner, Art Unit 2877 December 3, 2025
/Kara E. Geisel/Supervisory Patent Examiner, Art Unit 2877