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
The present office action is made in response to the amendments filed by applicant on 03/19/2026. 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.
2A) Regarding the drawings, applicant has submitted a replacement sheet contained figures 6A-6B;
2B) Regarding the specification, applicant has submitted a substitute specification with its marked up copy showing the changes to the specification and a statement that the substitute specification does not contain any new matter; and
2C) Regarding the claims, applicant has amended claims 17, 19-20, 23, 26 and 28-30.
Response to Arguments
The amendments to the drawings, the specification and the claims as provided in the amendment of 03/19/2026, and applicant's arguments provided in the mentioned amendment, pages 2-3 and 9-20, have been fully considered and resulted the following conclusions.
3A) Regarding the claims, because applicant has not added/canceled any claim into/from the application, thus the pending claims are still claims 17-30 in which claims 17-22, 25-27 and 29-30 are examined in the present office action, and claims 23-24 and 28 have been withdrawn from further consideration as being directed to a non-elected Invention. Note that claims 1-16 were canceled in the pre-amendment of 04/29/2023.
Applicant should note that the non-elected claims 23-24 and 28 will be rejoined if the linking claim 17 is later found as an allowable claim.
3B) Regarding the objections to the drawings as set forth in the office action of 09/19/2025, the amendments to the drawings and the specification as provided in the amendment of 03/19/2026, and applicant’s arguments provided in the mentioned amendment, page 9, have been fully considered and are sufficient to overcome the objections to the drawings as set forth in the mentioned office action.
3C) Regarding the objections to the specification as set forth in the office action of 09/19/2025, the amendments to the specification as provided in the amendment of 03/19/2026, and applicant’s arguments provided in the mentioned amendment, pages 2-3, have been fully considered and are sufficient to overcome the objections to the specification as set forth in the mentioned office action.
3D) Regarding the Claim Interpretation as set forth in the office action of 09/19/2025, because applicant has not amended the claim and/or provided any argument to overcome the Claim Interpretation in the amendment of 03/19/2026, thus the Claim Interpretation as set forth in the office action of 09/19/2025 is repeated in the present office action.
3E) Regarding the objections to claims 17-22, 25-27 and 29-30 as set forth in the office action of 09/19/2025, the amendments to the claims as provided in the amendment of 03/19/2026, and applicant’s arguments provided in the mentioned amendment, pages 16-17, have been fully considered and are sufficient to overcome the objections to the claims 17-22, 25-27 and 29-30 as set forth in the mentioned office action.
3F) Regarding the rejections of claims 17-22, 25-27 and 29-30 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and the rejections of claims 17-22, 25-27 and 29-30 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as set forth in the office action of 09/19/2025, the amendments to the claims as provided in the amendment of 03/19/2026, and applicant’s arguments provided in the mentioned amendment, pages 17-19, have been fully considered and are sufficient to overcome the rejections to the claims 17-22, 25-27 and 29-30 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and the rejections of claims 17-22, 25-27 and 29-30 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as set forth in the mentioned office action.
3G) Regarding the rejection of claims 17, 26-27 and 30 under 35 U.S.C. 102(a)(1) as being anticipated by Koester (US Patent No. 4,170,398), and the rejection of claims 17, 25-27 and 30, under 35 U.S.C. 102(a)(1) as being anticipated by the prior art as described in columns 2-3 and shown in figs 6-7 of the US Patent No. 7,463,396 issued to Lauer, as set forth in the office action of 09/19/2025, the amendments to the claims as provided in the amendment of 03/19/2026, and applicant’s arguments provided in the mentioned amendment, pages 10-15, have been fully considered but they are not persuasive and the rejections of those claims over the applied art set forth in the office action of 09/19/2025 are repeated in the present office action.
Regarding the rejection of claims 17, 26-27 and 30 under 35 U.S.C. 102(a)(1) as being anticipated by Koester (US Patent No. 4,170,398),applicant has argued the art of Koester or the prior art described by Lauer does not disclose the feature of “the re-scan optical system comprises one or more optical elements that is or are configured to cause at least two foci of the sample light in said light path”, see amendment in pages 10-15. The examiner respectfully disagree with the applicant’s viewpoints and respectfully invited the applicant to review the claims with claimed language as being provided/recited in the claims.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., static sample light path, the dynamic path, …) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant should note that the present claim recites that the re-scan optical system comprises one or more optical elements for causing at least two foci of the sample light in the light path, see amended claim 1 on lines 18-20 or amended claim 30 on lines 17-19. There is not any specific feature regarding “the sample light in the light path” being provided/or recited. Applicant should note that any feature recited in the claim without any specific limitation/feature is given a board interpretation.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant is respectfully invited to review the claims with claimed language as provided/recited in the claims. There are not any specific feature/limitation of the element(s)/system(s) recited in claims being provided. All systems with elements/components of the system(s) in the claim were disclosed as indicated/addressed in the rejection of the office action mailed to applicant on 09/19/2025.
In the art of Koester, the scanning microscope provided by Koester comprises an illumination system (S, L1, S1, L2, L3), a detection optical system (M2, M3, L4, L5, S2, M1, L6) for directing de-scan sample light (72) along a light path running from the light directing element (M1) back to the light directing element (M1) so that the light directing element perform a scanning of the sample light spot over the imaging plane (F) wherein there are three lens elements (L4, L5, L6) arranged in the light path from the light directing element (M1) to the image plane (F) for forming a first focus on the element (M4) and a second focus on the image plane (F). There is not any specific feature/limitation about where the focus is formed/located, how each of the foci is formed/created, …. being recited/provided in the claims.
In the prior art described by Lauer, the microscope of the prior art comprises an illumination optical system (115, 110, 111) and a detection optical system (111, 102-110, 100, 113) for directing de-scan sample light along a light path running from the object side surface (101a) of the light directing element (101) back to the image side surface (101b) of the light directing element (101) so that the light directing element perform a scanning of the sample light spot over the imaging plane (114) wherein there are plural lens elements (102, 106, 107) arranged in the light path from the light directing element (101) to the image plane (112) for forming two foci of the sample light on the light path, see fig. 7 where images are formed between mirrors (103, 105) and (108, 109). There is not any specific feature/limitation about where the focus is formed/located, how each of the foci is formed/created, …. being recited/provided in the claims. Thus, applicant’s arguments have been fully considered but they are not persuasive.
Thus, applicant’s arguments have been fully considered but they are not persuasive, and the rejections of those claims are repeated in the present office action.
Drawings
4. The replacement sheet contained figs. 6A-6B was received by the Office on 03/19/2026.
5. As a result of the changes to the drawings, the application now contains a total of twelve sheets of figures 1-2, 2A-2F, 3-5 and 6A-6B which includes eleven sheets of figures 1-2, 2A-2F, and 3-5 as filed on 12/29/2022, and one replacement sheet contained figs. 6A-6B as filed on 03/19/2026. The mentioned total of twelve sheets of figures 1-2, 2A-2F, 3-5 and 6A-6B are now approved by the examiner.
Specification
6. The substitute specification filed on 03/19/2026 have been entered.
7. The lengthy specification which is amended by the amendment of 03/19/2026 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.
Claim Interpretation
8. 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.
9. 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.
10. 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: “an imaging system”, “an illumination optical system”, and “a detection optical system” as recited in each of claims 17 and 30.
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 § 102
11. 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.
12. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
13. Claims 17, 26-27, 29 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koester (US Patent No. 4,170,398, of record).
Koester discloses a scanning microscope.
a) Regrading present claim 17, the scanning microscope as described in columns 4 and 6-7 and shown in fig. 7 comprises the following features:
a1) an illumination optical system (S, L1, S1, L2, L3) for directing an illumination light (71) and focusing that light onto a sample therewith providing an illumination light spot. The light (71) causes a sample light (72);
a2) a detection optical system (M2, M3, L4, L5, S2, M1, L6) for focusing at least part of the sample light (72) onto an imaging plane (F) of an imaging system herewith causing a sample spot on the imaging plane;
a3) a light directing element (M1) being used to scan the illumination light (71) over and through the sample, see columns 3-4 and fig. 1, in particular, column 3 on lines 65+ through column 4 on line 1 and column 7 on lines 35-36) and de-scan the sample light (72) from the sample and scan the sample light (72) over the imaging plane (F), see column 4 on lines 40-44; and
a4) the detection optical system (M2, M3, L4, L5, S2, M1, L6) directs de-scan sample light (72) along a light path running from the light directing element (M1) back to the light directing element (M1) so that the light directing element perform a scanning of the sample light spot over the imaging plane (F), see column 7 on lines 35-51 ad fig. 7; and
a5) the scanning microscope comprises three lenses (L4-L6) configured to cause two foci of the sample light on the light path, see column 7 on lines 42-51.
b) Regarding present claim 26, the light path comprises an optical slit (S2).
c) Regarding present claim 27, the imaging system with its imaging plane (F) is configured to integrate sample light (72, 74) incident on the imaging plane (F) over time, i.e., the imaging plane receives images of the sample throughout the time of the rotation of the light directing element (M1).
d) Regarding present claim 29, the scanning microscope of Koester comprises an objective (L3) for gathering the sample light from the sample, and focusing the sample light on a primary imaging plane, see the imaging plane on the element (M2) and the detection system (M2, M3, L4, L5, S2, M1, L6) images the image(s) in the primary image plane onto the imaging plane (F) of the imaging system.
e) Regarding claim 30, the method claim is implicitly met by the structures of the scanning microscope.
14. Claims 17, 25-27, 29 and 30, as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the prior art as described in columns 2-3 and shown in figs 6-7 of the US Patent No. 7,463,396 issued to Lauer (of record).
The prior art as described in columns 2-3 and shown in figs 6-7 of the US Patent No. 7,463,396 issued to Lauer discloses a scanning microscope.
a) Regrading present claim 17, the scanning microscope of prior art as described in columns 2-3 and shown in figs 6-7 of the US Patent No. 7,463,396 comprises the following features:
a1) an illumination optical system (115, 110, 111) for directing an illumination light (115) and focusing that light onto a sample (112) therewith providing an illumination light spot. The light (115) causes a sample light;
a2) a detection optical system (111, 102-110, 100, 113) for focusing at least part of the sample light onto an imaging plane (114) of an imaging system herewith causing a sample spot on the imaging plane;
a3) a light directing element (101) being used to scan the illumination light (115) over the sample and de-scan the sample light from the sample and scan the sample light over the imaging plane (114);
a4) the detection optical system (111, 102-110, 100, 113) directs de-scan sample light along a light path running from the object side surface (101a) of the light directing element (101) back to the image side surface (101b) of the light directing element (101) so that the light directing element perform a scanning of the sample light spot over the imaging plane (114); and
a5) the scanning microscope comprises more than one lenses (102, 106, 107) configured to cause two foci of the sample light on the light path, see fig. 7 where images are formed between mirrors (103, 105) and (108, 109).
b) Regarding present claim 25, the microscope of the prior art as described in columns 2-3 and shown in figs 6-7 of the US Patent No. 7,463,396 issued to Lauer comprises a beam splitter (100) configured to separate the illumination light and the sample light.
c) Regarding present claim 26, the light path comprises an optical slit (104).
d) Regarding present claim 27, the imaging system with its imaging plane (114) is configured to integrate sample light incident on the imaging plane (114) over time, i.e., the imaging plane receives images of the sample throughout the time of the rotation of the light directing element (M1).
e) Regarding present claim 29, the microscope of the prior art discloses an objective (111) for gathering the sample light from the sample (112) and focusing the sample light on a primary imaging plane, see the imaging plane between the mirrors (103, 105) and the detection system (111, 102-110, 100, 113) images the image(s) in the primary image plane onto the imaging plane (114) of the imaging system.
f) Regarding claim 30, the method claim is implicitly met by the structures of the scanning microscope.
Allowable Subject Matter
15. Claims 18-22 are objected to as being dependent upon a rejected base claim, but would be allowable if each of claims 18 and 21 is rewritten in independent form including all of the limitations of the base claim and any intervening claims.
16. The following is a statement of reasons for the indication of allowable subject matter:
a) The re-scan optical system having an illumination optical system for directing illumination light at a sample, a detection optical system for directing light from the sample to an image plane, a directing element for scanning illumination light over the sample and de-scanning the sample light over the image plane wherein the detection optical system directs the de-scanned sample light along a light path running from the light directing element back to the light directing element and the re-scan optical system has one or more optical element(s) for forming at least two foci as recited in claim 18 is allowable with respect to the prior art, in particular, the US Patent Nos. 4,170,398 and 9,645,375 and the prior art described in the US Patent No. 7,463,396 by the feature regarding a prism located in the light path as recited in the feature thereof “the light path … the sample light” (claim 18 on lines 1-2).
b) The re-scan optical system having an illumination optical system for directing illumination light at a sample, a detection optical system for directing light from the sample to an image plane, a directing element for scanning illumination light over the sample and de-scanning the sample light over the image plane wherein the detection optical system directs the de-scanned sample light along a light path running from the light directing element back to the light directing element and the re-scan optical system has one or more optical element(s) for forming at least two foci as recited in claim 21 is allowable with respect to the prior art, in particular, the US Patent Nos. 4,170,398 and 9,645,375 and the prior art described in the US Patent No. 7,463,396 by the feature regarding a prism located in the light path as recited in the feature thereof “the light path … the sample light” (claim 21 on lines 1-4).
Conclusion
17. The US Patent No. 9,645,375 is cited as of interest in that it re-scan optical system having an illumination optical system for directing illumination light at a sample, a detection optical system for directing light from the sample to an image plane, a directing element for scanning illumination light over the sample and de-scanning the sample light over the image plane wherein the detection optical system directs the de-scanned sample light along a light path running from the light directing element back to the light directing element and the re-scan optical system has one or more optical element(s) for forming at least two foci, see columns 16-17 and figs. 6-7. However, the Patent does not discloses a prism in the sample light path as claimed in each of present claims 18 and 21.
18. 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.
19. 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.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872