DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. 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 final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 16, 2026 has been entered.
Claim Objections
3. Claim 27 is objected to because of the following informalities: on line 2 it appears that ‘a first transmission axis’ should read -said first transmission axis-; on line 3 it appears that ‘a first optical axis’ should read -said first optical axis-; on line 3 it appears that ‘a second transmission axis’ should read -said second transmission axis-; and on line 4 it appears that ‘a second optical axis’ should read -said second optical axis-. Appropriate corrections are required.
Claim 28 is objected to by virtue of its dependency from claim 27.
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 19, 20, 22, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Milner et al. (2016/0154229)-previously cited in view of Bishop et al. (2004/0027664)-previously cited and further in view of Ohashi et al. (JP 2016-38528)-previously cited-using machine translation and Priestley (6,317,209).
As for claim 19, Milner in a spectrally-encoded high-extinction polarization microscope and methods of use discloses/suggests the following: a method to analyze a sample comprising birefringent particles suspended in a fluid (abstract, paragraphs 0003, 0007,0051 with Figure 1: 100) and said method comprising the steps of: providing a beam of light from a light source (Figure 1: 110); providing a matched pair of polarizing filters comprising a first polarizing filter and a second polarizing filter (Figure 1: treating 120 and 130 as the first polarizing filter and 150 and 160 as the second polarizing filter; the following referring to them as matched: paragraphs 0031, 0035, 0061, 0064); said first polarizing filter comprising a first linear polarizer and a first quarter-wave optical retarder and being configurable to polarize incident light into circularly polarized light having a first handedness viewed from the light source and said second polarizing filter comprising a second linear polarizer and a second quarter-wave optical retarder and being configurable to polarize light into circularly polarized light having a second handedness, with said first handedness and said second handedness being opposite viewed from the light source (Figure 1: 120 and 130 as first polarizing filter and 150 and 160 as second polarizing filter; noting that the retarders are may be circular retarders thereby quarter-wave optical retarders: paragraph 0035, 0040, 0062, 0080, ), said matched pair of polarizing filters having an extinction ratio of at most 10-5 (paragraph 0061:10-5 to 10-6 ); introducing a sample comprising birefringent particles suspended in a fluid between said first polarizing filter and said second polarizing filter (Figure 1: 140); passing said beam of light through said first polarizing filter, thereby creating a first beam of light (Figure 1: light from 110 through 120 and 130); contacting said sample with said first beam of light thereby creating a second beam of light (Figure 1: light from 130 through 140 to 150); passing said second beam of light through said second polarizing filter, thereby creating a third beam of light (Figure 1: light passing through 140 to 150); measuring the third beam of light by means of a detector (Figure 1: detector with processor; paragraph 0066).
As for said birefringent particles have a size ranging between 1 μm and 5 mm and/or wherein said method is capable of detecting concentrations lower than 0.1 micromol/L, Milner does not explicitly state this. Milner does suggest that the particles observed, diatoms, are around 4 microns in size (paragraph 0093). Nevertheless, Bishop in a method and apparatus for measuring birefringent particles teaches determining particulate inorganic carbon concentrations in seawater based on birefringence specifically calcium carbonate particles that has extreme birefringence that makes it appear to light when viewed through crossed polarizers (paragraph 0012); wherein suspensions with particle size distributions ranging from .74 micron to 9.1 microns and to 9.8 microns wherein coccolith sizes are typically 1 and 2 microns in diameter were investigated (paragraph 0044) and noted that concentrations less than .01 micromol/L existed in deep ocean waters (paragraph 0006).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have said birefringent particles have a size ranging between 1 μm and 5 mm and/or wherein said method is capable of detecting concentrations lower than 0.1 micromol/L in order to detect concentrations of calcium carbonate such as in coccoliths which range from 1 to 2 microns in diameter in deep ocean waters with a concentration of less than .01 micromol/L to determine particulate inorganic concentrations in seawater based on birefringence for calcium carbonate particles have extreme birefringence that make them appear to light when viewed through crossed polarizers.
As for ‘wherein said matched pair of polarizing filters is obtainable by a method to produce the matched pair of polarizing filters…securing said first linear polarizer and said first quarter-wave optical retarder together to form said first polarizing filter and securing said second linear polarizer and said second quarter-wave optical retarder together to form said second polarizing filter (starting on line 32 of claim 19),’ this does not appear to necessarily limit the said matched pair of polarizing filters by the process, method, to produce them because of the phrase ‘is obtainable by.’ Are Milner’s matched pair of polarizing filters the same or obvious over a matched pair of polarizers obtained by the method to produce the matched pair of polarizing filters starting on line 32 of claim 19 and thereby, are necessarily obtainable if produced by the same method?
As stated before "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Nevertheless, structurally having the said first linear polarizer and said first quarter-wave optical retarder secured together to form said first polarizing filter and said second linear polarizer and said second quarter-wave optical retarder secured together to form said second polarizing filter (noting the last three lines of claim 19), Milner does not explicitly state this. Milner suggests that the said first linear polarizer and said first quarter-wave optical retarder are secured together to form said first polarizing filter by having them together in the illumination path of the polarization microscope and optically coupled (Fig. 1: 100: 120 and 130 with paragraph 0062) and suggests that the said second linear polarizer and said second quarter-wave optical retarder are secured together to form said second polarizing filter by having them together in the detection path of the polarization microscope and optically coupled (Fig. 1: 100: 160 and 150 with paragraph 0067). And Ohashi in a polarization microscope and polarization microscope control device, and circular polarization observation method demonstrates securing a first linear polarizer and first quarter-wave plate together to form a right circular polarization element (Fig. 1: 35, 36, 37 with abstract; page 2: last three lines and page 3: first two lines) and securing a second linear polarizer and second quarter-wave plate together to form a left circular polarization element (Fig. 1: 42, 43, 44 with abstract; page 3: lines 23-27). As well Priestley in an automated system for measurement of an optical property teaches a system for measuring birefringence wherein a circular polarizer comprises a combination of a polarizer and a quarter-wave plate together in the illumination path and a circular analyzer comprises a combination of an analyzer and quarter-wave plate together in the detection path (FIG. 2: 14, 22, 24 and 16, 28, 26 with col. 2, lines 1-17).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the said first linear polarizer and said first quarter-wave optical retarder secured together to form said first polarizing filter and said second linear polarizer and said second quarter-wave optical retarder secured together to form said second polarizing filter in order to provide a right circular polarization element, a circular polarizer, in the illumination path and a left circular polarization element, a circular analyzer in the detection path to measure birefringence with circularly polarized light with a polarization microscope.
As for claim 20, Milner in view of Bishop, Ohashi, and Priestley discloses/suggests everything as above (see claim 19). In addition, Milner in view of Bishop discloses/suggests determining a concentration of said birefringent particles suspended in said fluid (see claim 19 above: ‘it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have said birefringent particles have a size ranging between 1 μm and 5 mm and/or wherein said method is capable of detecting concentrations lower than 0.1 micromol/L in order to detect concentrations of calcium carbonate such as in coccoliths which range from 1 to 2 microns in diameter in deep ocean waters with a concentration of less than .01 micromol/L to determine particulate inorganic concentrations in seawater based on birefringence for calcium carbonate particles have extreme birefringence that make them appear to light when viewed through crossed polarizers’: calcium carbonate particles/coccoliths suspended in the fluid, seawater).
As for claim 22, Milner in view of Bishop, Ohashi, and Priestley discloses/suggests everything as above (see claim 19). In addition, Milner in view of Bishop discloses/suggests wherein said birefringent particles comprise calcium carbonate (see claim 19 above: ‘it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have said birefringent particles have a size ranging between 1 μm and 5 mm and/or wherein said method is capable of detecting concentrations lower than 0.1 micromol/L in order to detect concentrations of calcium carbonate such as in coccoliths which range from 1 to 2 microns in diameter in deep ocean waters with a concentration of less than .01 micromol/L to determine particulate inorganic concentrations in seawater based on birefringence for calcium carbonate particles have extreme birefringence that make them appear to light when viewed through crossed polarizers’).
As for claim 23, Milner in view of Bishop, Ohashi, and Priestley discloses/suggests everything as above (see claim 19). In addition, Milner in view of Bishop discloses/suggests wherein said fluid comprises water or seawater (see claim 19 above: ‘it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have said birefringent particles have a size ranging between 1 μm and 5 mm and/or wherein said method is capable of detecting concentrations lower than 0.1 micromol/L in order to detect concentrations of calcium carbonate such as in coccoliths which range from 1 to 2 microns in diameter in deep ocean waters with a concentration of less than .01 micromol/L to determine particulate inorganic concentrations in seawater based on birefringence for calcium carbonate particles have extreme birefringence that make them appear to light when viewed through crossed polarizers’).
6. Claims 24 and 26-30 are rejected under 35 U.S.C. 103 as being unpatentable over Milner et al. (2016/0154229)-previously cited in view of Ohashi et al. (JP 2016-38528)-previously cited-using machine translation and Priestley (6,317,209).
As for claim 24, Milner in a spectrally-encoded high-extinction polarization microscope and methods of use discloses/suggests the following: an apparatus for analyzing a sample comprising birefringent particles suspended in a fluid (abstract, paragraphs 0003, 0007,0051 with Figure 1: 100) said apparatus comprising: a light source for emitting a beam of light along a propagation axis (Figure 1: 110); a matched pair of polarizing filters comprising a first polarizing filter and a second polarizing filter (Figure 1: treating 120 and 130 as the first polarizing filter and 150 and 160 as the second polarizing filter; the following referring to them as matched: paragraphs 0031, 0035, 0061, 0064), and a detector (Figure 1: Detector); said light source, said matched pair of polarizing filters and said detector being arranged such that said beam of light emitted from said light source subsequently can pass through said first polarizing filter, can impinges on the sample to be analyzed and can pass through said second polarizing filter being detected by said detector (Figure 1: 110 to 120 to 130 to 140 to 150 to 160 to Detector); said first polarizing filter comprising a first linear polarizer and a first quarter-wave optical retarder and being configurable to polarize incident light into circularly polarized light having a first handedness viewed from the light source and said second polarizing filter comprising a second linear polarizer and a second quarter-wave optical retarder and being configurable to polarize light into circularly polarized light having a second handedness, with said first handedness and said second handedness being opposite viewed from the light source (Figure 1: 120 and 130 as first polarizing filter and 150 and 160 as second polarizing filter; noting that the retarders are may be circular retarders thereby quarter-wave optical retarders: paragraph 0035, 0040, 0062, 0080), said matched pair of polarizing filters having an extinction ratio lower than 10-5 (paragraph 0066).
As for ‘wherein said apparatus is configured for autonomous in-situ operation in an oceanic environment’, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex Parte Masham, 2 USPQ F.2d 1647 (1987).
As for ‘wherein said matched pair of polarizing filters is obtainable by a method to produce the matched pair of polarizing filters…securing said first linear polarizer and said first quarter-wave optical retarder together to form said first polarizing filter and securing said second linear polarizer and said second quarter-wave optical retarder together to form said second polarizing filter (lines 18-55 of claim 24),’ this does not appear to necessarily limit the said matched pair of polarizing filters by the process, method, to produce them because of the phrase ‘is obtainable by.’ Are Milner’s matched pair of polarizing filters the same or obvious over a matched pair of polarizers obtained by the method to produce the matched pair of polarizing filters starting on line 18 of claim 24 and thereby, are necessarily obtainable if produced by the same method?
As stated before "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Nevertheless, structurally having the said first linear polarizer and said first quarter-wave optical retarder secured together to form said first polarizing filter and said second linear polarizer and said second quarter-wave optical retarder secured together to form said second polarizing filter (noting lines 53-55 of claim 24), Milner does not explicitly state this. Milner suggests that the said first linear polarizer and said first quarter-wave optical retarder are secured together to form said first polarizing filter by having them together in the illumination path of the polarization microscope and optically coupled (Fig. 1: 100: 120 and 130 with paragraph 0062) and suggests that the said second linear polarizer and said second quarter-wave optical retarder are secured together to form said second polarizing filter by having them together in the detection path of the polarization microscope and optically coupled (Fig. 1: 100: 160 and 150 with paragraph 0067). And Ohashi in a polarization microscope and polarization microscope control device, and circular polarization observation method demonstrates securing a first linear polarizer and first quarter-wave plate together to form a right circular polarization element (Fig. 1: 35, 36, 37 with abstract; page 2: last three lines and page 3: first two lines) and securing a second linear polarizer and second quarter-wave plate together to form a left circular polarization element (Fig. 1: 42, 43, 44 with abstract; page 3: lines 23-27). As well Priestley in an automated system for measurement of an optical property teaches a system for measuring birefringence wherein a circular polarizer comprises a combination of a polarizer and a quarter-wave plate together in the illumination path and a circular analyzer comprises a combination of an analyzer and quarter-wave plate together in the detection path (FIG. 2: 14, 22, 24 and 16, 28, 26 with col. 2, lines 1-17).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the said first linear polarizer and said first quarter-wave optical retarder secured together to form said first polarizing filter and said second linear polarizer and said second quarter-wave optical retarder secured together to form said second polarizing filter in order to provide a right circular polarization element, a circular polarizer, in the illumination path and a left circular polarization element, a circular analyzer in the detection path to measure birefringence with circularly polarized light with a polarization microscope.
As for claim 26, Milner in view of Ohashi and Priestley discloses/suggests everything as above (see claim 24). In addition, Milner discloses/suggests that the apparatus is a transmissometer (Figure 1: transmitted light is detected and measured: see 110 to 140 to detector and processor).
As for claim 27, Milner in view of Ohashi and Priestley discloses/suggests everything as above (see claim 24). In addition, Milner discloses/suggests wherein said first linear polarizer has said first transmission axis, said first quarter-wave optical retarder has said first optical axis, said second polarizing filter has said second transmission axis and said second quarter-wave optical retarder has said second optical axis, with said first transmission axis, said second transmission axis, said first optical axis and said second optical axis each being oriented in a plane perpendicular to said propagation axis of said beam of light (paragraph 0061, 0068, 0073).
As for claim 28, Milner in view of Ohashi and Priestley discloses/suggests everything as above (see claim 27). In addition, Millner discloses/suggests wherein said first transmission axis and said second transmission axis are perpendicular to each other (paragraph 0061).
As for claim 29, Milner in view of Ohashi and Priestley discloses/suggests everything as above (see claim 24). In addition, Millner discloses/suggests wherein said first optical axis and said first transmission axis define a first angle and said second optical axis and said second transmission axis define a second angle, with said first angle and said second angle being 45 degrees plus or minus 0.10 degrees and with said first angle and said second angle having opposite signs as viewed from said light source (Millner: paragraph 0062, 0068, 0070; noting Ohashi: FIG. 2 with page 4: third and fourth paragraphs).
As for claim 30, Milner in view of Ohashi and Priestley discloses/suggests everything as above (see claim 24). In addition, Milner discloses/suggests one or more spectral filters (paragraph 0060).
Allowable Subject Matter
9. Claims 16-18 are allowed.
Response to Arguments
10. Applicant’s arguments, see Remarks pages 12-13, filed June 16, 2026, with respect to the previous rejections under 35 USC 102 and 103 have been considered but are moot because the new grounds of rejection do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 2009/0040601 to Saito et al. (see FIGS. 1, 3, and 4: 7, 8, 15, and 16a) and US 2017/0276921 to Tanaka (see FIGS. 1 and 2: 143, 144, 153, and 154).
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/GORDON J STOCK JR/
Primary Examiner, Art Unit 2877
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