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 on 03/27/2026. It is noted that in the amendment, applicant has made changes to the abstract, the drawings, the specification and the claims.
2A) Regarding to the abstract, applicant has submitted an amended abstract in a separated sheet;
2B) Regarding to 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 to the claims, applicant has amended claims 1, 4-6, 8-11, 13-16 and 19-20, canceled claims 2-3, and added a new claim, i.e., claim 21, into the application.
Response to Arguments
3. The amendments to the abstract, the drawings, the specification and the claims as provided in the amendment of 03/27/2026, and applicant's arguments provided in the mentioned amendments, pages 3 and 10-13, have been fully considered and resulted the following conclusions.
3A) Regarding the claims, the following conclusions are made:
3A1) because applicant has canceled claims 2-3 from the application and has added new claim 21 into the application, thus as amended and newly-added, the application now contains claims 1 and 4-21; and
3A2) a review of the newly-added claim 21 has resulted thar the claim recites similar feature recited in the claims 10 and 15, thus claim 21 is examined with the claims of the elected Invention I. which now includes claims 1, 4-12, 14-16, 19 and 21. Claims 13, 17-18 and 20 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention. Applicant should note that the non-elected claims 13, 17-18 and 20 will be rejoined if the linking claim 1 is later found as an allowable claim.
3B) Regarding the objections to the drawings as set forth in the office action of 11/14/2025, the amendments to the drawings and the specification as provided in the amendment of 03/27/2026 and applicant’s arguments provided in the mentioned amendment, page 10, have been fully considered and are sufficient to overcome the objections to the drawings set forth in the mentioned office action.
However, the drawings having two replacement sheets of figures 1-2 as filed on 03/27/2026 is objected as set forth in the present office action.
3C) Regarding the objections to the abstract and the specification as set forth in the office action of 11/14/2025, the amendments to the abstract and the specification as provided in the amendment of 03/27/2026 and applicant’s arguments provided in the mentioned amendment, pages 3 and 13, have been fully considered and are sufficient to overcome the objections to the abstract and the specification set forth in the mentioned office action.
3D) Regarding the Claim Interpretation set forth in the office action of 11/14/2025, because applicant has not amended the claims and/or provided any arguments to overcome the Claim Interpretation, thus the Claim interpretation is repeated in the present office action.
3E) Regarding the rejections of claims 9, 11 and 14-16 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and the rejections of claims 1-12, 14-16 and 19 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 11/14/2025, the amendments to the claims as provided in the amendment of 03/27/2026 and applicant’s arguments provided in the mentioned amendment, pages 11-12 have been fully considered and are sufficient to overcome the rejections of those claims under 35 U.S.C. 112 set forth in the mentioned office action.
However, the amended claims are subjected to new rejections under 35 U.S.C. 112 as set forth in the present office action.
3F) Regarding the rejection of claims 1-2, 10 and 12 under 35 U.S.C. 102(a)(1) as being anticipated by Kawano et al (EP 1 580 586 A1) and the rejection of claims 1-2 and 9-12 under 35 U.S.C. 103 as being unpatentable over Fukutake (US Patent No. 9,709,786) in view of Kawano et al (EP 1 580 586 A1) as set forth in the office action of 11/14/2025, the amendments to the claims as provided in the amendment of 03/27/2026 and applicant’s arguments provided in the mentioned amendment, page 12, have been fully considered and are sufficient to overcome the rejections of those claims over the applied arts set forth in the mentioned office action.
Drawings
4. The two replacement sheets contained figures 1-2 were received by the Office on 03/27/2026.
5. As a result of the changes to the drawings, the application now contains a total of two replacement sheets of figures 1-2 as filed on 03/27/2026 and not any sheet of drawings as originally filed on 02/23/2023. The mentioned total of two replacement sheets of figures 1-2 se is objected by the examiner for the following reasons:
6. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following claimed feature must be shown or the features canceled from the claims. No new matter should be entered.
The feature regarding “a z-stack controller” for controlling the detector to capture series of images as recited in each of claims 11, 14 and 16.
Applicant is respectfully invited to review the figure 2 in which it shows/illustrate a connection between the Z-stack controller (21) and the (first) objective lens (20); however, the figure does not show/illustrate the connection between the Z-stack controller and the detector (26) to support for the feature that the Z-controller control to detector as claimed.
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.
Office action. The objection to the drawings will not be held in abeyance.
Specification
7. The substitute specification filed on 03/27/2026 has been entered.
8. The lengthy specification which was amended by the amendment of 03/27/2026 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
9. 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.
10. 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.
11. 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) “a shutter mechanism” as recited in each of claims 9 and 15;
b) “a z-stack controller” as recited in each of claims 11, 14 and 16; and
c) “an integrated data storage unit” as recited in claim 12.
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
12. 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.
13. Claims 1, 4-12, 14-16, 19 and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the following reasons.
a) Claim 1 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 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the disclosure, as originally filed, does not disclose/support for the feature regarding a light source configured to illuminate contents of the sample stage as recited in the claim on lines 3-4 (examiner’s emphasis).
Applicant is respectfully invited to review the disclosure, in particular, in pages 2 and 7-10 of the substitute specification filed on 03/27/2026, which discloses a light source (36) for proving light to illuminate a sample (O) located in a sample holder/stage (24). The disclosure, as originally filed, does not provide support for a light source configured to illuminate “contents of the sample stage” as now recited in the claim.
b) Claim 11 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 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the disclosure, as originally filed, does not disclose/support for the feature regarding the Z-stack controller to control the detector to capture a series of images as the first objective is driven along the optical z-axis as recited in the claim on lines 3-5 (examiner’s emphasis).
Applicant is respectfully invited to review the disclosure, in particular, in pages 4-5 and 7 of the substitute specification filed on 03/27/2026, which discloses a Z-stack controller (21) is used to drive the objective (20). There is not any teaching/description being provided in the disclosure, as originally filed, for supporting the feature that the Z-stack controller is used to control the detector as is now claimed.
Applicant should note that a camera is driven along an optical z-axis as mentioned in the page 4 is understood as an optical device for receiving a plurality of images, see page 5 on lines 6-7 of the mentioned specification.
c) Each of claims 10 and 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the similar reason as set forth in element a) above.
d) Each of claims 14 and 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the similar reason as set forth in element b) above.
e) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
14. Claims 1, 4-12, 14-16, 19 and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the following reasons.
a) Claim 1 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 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the disclosure does not disclose/support for the feature regarding a light source configured to illuminate contents of the sample stage as recited in the claim on lines 3-4 (examiner’s emphasis).
Applicant is respectfully invited to review the disclosure, in particular, in pages 2 and 7-10 of the substitute specification filed on 03/27/2026, which discloses a light source (36) for proving light to illuminate a sample (O) located in a sample holder/stage (24). The disclosure does not provide support for a light source configured to illuminate “contents of the sample stage” as now recited in the claim.
b) Claim 11 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 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the disclosure does not disclose/support for the feature regarding the Z-stack controller to control the detector to capture a series of images as the first objective is driven along the optical z-axis as recited in the claim on lines 3-5 (examiner’s emphasis).
Applicant is respectfully invited to review the disclosure, in particular, in pages 4-5 and 7 of the substitute specification filed on 03/27/2026, which discloses a Z-stack controller (21) is used to drive the objective (20). There is not any teaching/description being provided in the disclosure for supporting the feature that the Z-stack controller is used to control the detector as is now claimed.
Applicant should note that a camera is driven along an optical z-axis as mentioned in the page 4 is understood as an optical device for receiving a plurality of images, see page 5 on lines 6-7 of the mentioned specification.
c) Each of claims 10 and 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the similar reason as set forth in element a) above.
d) Each of claims 14 and 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the similar reason as set forth in element b) above.
e) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
15. 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.
16. Claims 1, 4-12, 14-16, 19 and 21 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 by the feature thereof “a light source … the sample stage” (lines 3-4).
The mentioned feature makes the claim indefinite because it is unclear about the so-called “the contents” of a sample stage. What does applicant mean by “the contents”?
b) Claim 21 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 “the beamsplitter … the second objective” (lines 1-3).
The mentioned feature makes the claim indefinite because it is unclear about the structural relationship(s) between the sample holder, see the claim on lines 1-2 and the sample stage, see the claim 3 and its base claim 1 on line 2. Does the microscope having both a sample holder and a sample stage?
c) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Allowable Subject Matter
17. Claims 1, 4-12, 14-16, 19 and 21 would be allowable if the claims are rewritten/amended to overcome the rejections of those claims under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as set forth in the present office action.
18. The following is a statement of reasons for the indication of allowable subject matter:
The microscope having a sample stage supporting a sample, a light source for illuminating the sample, a detector, two objectives having different magnifications disposed on two sides of the sample stage wherein the two objectives have a common optical axis and configured to image the sample in a common focal plane, two sets of optical elements for defining two optical paths from the objectives to the detector and a beam splitter as recited in the independent claim 1 is allowable with respect to the prior art, in particular, the EP 1 580 586 A1 and the US Patent No. 9,709,786 by the features regarding the structure of the beam splitter as recited in the feature thereof “a beam splitter … non-transmissive portions” (claim 1 on lines 17-19).
It is noted that while an optical element in the form of a digital mirror device, i.e., DMD, which is understood as an optical element having transmissive portions and non-transmissive portions are known in the art, see the US Publication No. 2018/0359404, for example; however, the it would not have been obvious to one skill in the art to replace the beam splitter (17) in the Patent No. 9,709,786 by a DMD suggested by the mentioned Publication because the beam splitter disclosed in the mentioned Patent is used to provide a full/entire light with same intensity (L1, L2) to each objectives (19,20).
Conclusion
19. 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.
20. 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
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