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 .
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.
Response to Amendment
Receipt is acknowledged of applicant’s amendment filed November 12, 2025. Claims 1-20 are pending and an action on the merits is as follows.
Response to Arguments
Applicant's arguments filed November 12, 2025 have been fully considered but they are not persuasive.
In regard to independent claim 1, applicant’s arguments, on pages 6-8 of the Remarks, that the previously applied prior art rejection fails to disclose all of the limitations of claim 1 have been fully considered and are appreciated. Namely, applicant argues that the adjustability rationale used in the rejection of claim 1 “cannot be used to show an element of a claim”. However, as cited in the previous office action and set forth below, Deck fails to disclose
“a first plate configured to removably connect to the frame, the first set of optical components fixably position on the first plate, a second optical assembly comprising: a second plate configured to removably connect to the frame, and a second set of optical elements configured to pass the second output light to the source objective, wherein the second set of optical elements are fixably positioned on the second plate to optically align the second output pupil of the second light source with the imaging pupil of the source objective. However, it was noted that Boeker et al. discloses (see e.g. Figure 1): a microscope system with an plate 12 (denoted “ exchangeable holder”, paragraph [0021]) holding an optical system 13 (denoted “changing device”). The Boeker et al. reference establishes a microscope system that has a exchangeable holder. Such a teaching suggests that making a microscope system with interchangeable components would fall within ordinary skill in the art. It was further noted that making the microscope have adjustable light sources and optical paths in order to examine various specimen would be considered obvious to one of ordinary skill in the art, since it has held that the provision of adjustability, where needed, involves only routine skill in the art (in re Stevens101 USPQ 284 (CCPA 1954), see e.g. MPEP 2144.04). Therefore, it is noted that the rationale was used in light of the references to Boeker et al., as set forth in the previously office action and in the rejection below.
Similar arguments apply to independent claims 11 and 18.
In regard to dependent claim 10, applicant argues that the “convex reflective grating” of Ji et al. may not be considered to correspond to a “reflector” as claimed has been fully considered and is appreciated. However, since the grating is reflective, it may be considered to satisfy applicant’s claimed limitation of “convex reflector”.
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.
Claims 1, 2, 4-9, 11-13, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Deck (US 2008/0049304 A1) in view of Boeker et al. (US 2008/0084606 A1).
In regard to claim 1, Deck discloses a microscope 100 for examining a specimen (see e.g. paragraph [0009]), the microscope 100 configured to receive a first light source 202 or a second light source (see e.g. paragraph [0009]), the first light source 202 being configured to emit a first output light through a first output pupil 204 (see e.g. paragraph [0009]), and the second light source being configured to emit a second output light through a second output pupil, the microscope comprising (see e.g. Figure 1):
a frame (see e.g. Figure 1 and note that some frame would be required to hold and house the components);
a source objective 218 fixably connected to the frame (see e.g. Figure 1 and note that some frame would be required to hold and house the components);
a first optical assembly comprising (see e.g. Figure 1):
and a first set of optical elements (i.e. at least 206, 208, 210) configured to pass the first output light to the source objective (see e.g. paragraph [0009]), wherein the first set of optical elements (i.e. at least 206, 208, 210) are fixably positioned to optically align the first output pupil 204 of the first light source 202 with an imaging pupil of the source objective 218 (see e.g. paragraph [0009]).
Deck fails to disclose
a first plate configured to removably connect to the frame, the first set of optical components fixably position on the first plate,
a second optical assembly comprising:
a second plate configured to removably connect to the frame, and a second set of optical elements configured to pass the second output light to the source objective, wherein the second set of optical elements are fixably positioned on the second plate to optically align the second output pupil of the second light source with the imaging pupil of the source objective.
However, Boeker et al. discloses (see e.g. Figure 1): a microscope system with an plate 12 (denoted “ exchangeable holder”, paragraph [0021]) holding an optical system 13 (denoted “changing device”). Further, making the microscope have adjustable light sources and optical paths in order to examine various specimen would be considered obvious to one of ordinary skill in the art, since it has held that the provision of adjustability, where needed, involves only routine skill in the art (in re Stevens101 USPQ 284 (CCPA 1954), see e.g. MPEP 2144.04).
Given the teachings of Boeker et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck with a first plate configured to removably connect to the frame, the first set of optical components fixably position on the first plate, a second optical assembly comprising: a second plate configured to removably connect to the frame, and a second set of optical elements configured to pass the second output light to the source objective, wherein the second set of optical elements are fixably positioned on the second plate to optically align the second output pupil of the second light source with the imaging pupil of the source objective.
Making the microscope/spectroscope adjustable by exchanging optical elements would provide flexibility in the type and size of specimen that may be examined by the device.
In regard to claim 2, Deck, in view of Boeker et al., discloses the limitations as applied to claim 1 above, but fails to disclose
wherein light exiting the first optical assembly and light exiting the second optical assembly have a same conjugation distance and collimation.
However, one of ordinary skill in the art before the effective filing date of the invention would recognize using a configuration in which light exiting the first optical assembly and light exiting the second optical assembly have a same conjugation distance and collimation, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck, in view of Boeker et al., with wherein light exiting the first optical assembly and light exiting the second optical assembly have a same conjugation distance and collimation.
Providing the optical assemblies with a same conjugation distance and collimation would allow compatibility with the static portions of the microscope.
In regard to claim 4, Deck, in view of Boeker et al., discloses the limitations as applied to claim 1 above.
Deck further discloses (see e.g. Figure 1):
at least one reflectors 212, 214, 216 fixably connected to the frame to pass light exiting from either the first optical assembly (i.e. including at least 206, 208, 210) or the second optical assembly towards the source objective (see e.g. Figure 1 and note that the components are necessarily fixed to a housing or frame).
In regard to claim 5, Deck, in view of Boeker et al., discloses the limitations as applied to claim 1 above.
Deck further discloses (see e.g. Figure 1):
wherein the source objective 218 directs light towards a specimen (i.e. on stage 10, see e.g. paragraph [0009]).
In regard to claim 6, Deck, in view of Boeker et al., discloses the limitations as applied to claim 5 above.
Deck further discloses (see e.g. Figure 1):
a detector 312 ( denoted “camera optical element”, see e.g. paragraph [0010]) fixably connected to the frame for collecting light passed through the specimen (i.e. on stage 10, see e.g. paragraph [0009] and see e.g. Figure 1 and note that the components are necessarily fixed to a housing or frame).
In regard to claim 7, Deck, in view of Boeker et al., discloses the limitations as applied to claim 1 above.
Deck further discloses (see e.g. Figure 1):
wherein the first output light (i.e. from light source 202) is infrared light (see e.g. paragraph [0009]).
Deck fails to disclose the second output light is infrared light.
However, Boeker et al. discloses (see e.g. Figure 1): a microscope system with an plate 12 (denoted “ exchangeable holder”, paragraph [0021]) holding an optical system 13 (denoted “changing device”). Further, making the microscope have adjustable light sources and optical paths in order to examine various specimen would be considered obvious to one of ordinary skill in the art, since it has held that the provision of adjustability, where needed, involves only routine skill in the art (in re Stevens101 USPQ 284 (CCPA 1954), see e.g. MPEP 2144.04).
Given the teachings of Boeker et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck with the second output light is infrared light.
Making the microscope/spectroscope adjustable by exchanging light sources would provide flexibility in the type and size of specimen that may be examined by the device. By providing multiple sources in the infrared, the specimen may be observed at various wavelengths in order to determine the chemical structure of the specimen for example.
In regard to claim 8, Deck, in view of Boeker et al., discloses the limitations as applied to claim 1 above.
Deck further discloses (see e.g. Figure 1):
wherein at least one of the first light source 202 and the second light source outputs a modulated light (see e.g. paragraph [0009]).
In regard to claim 9, Deck, in view of Boeker et al., discloses the limitations as applied to claim 1 above.
Deck further discloses (see e.g. Figure 1):
wherein the microscope is a spectroscopic microscope 100 (see e.g. paragraph [0002]).
In regard to claim 11, Deck discloses a method for examining a specimen with a microscope 100 (see e.g. paragraph [0009]), the method comprising (see e.g. Figure 1):
connecting a first light source 202 to a frame of the microscope 100 (see e.g. Figure 1 and note that some frame would be required to hold and house the components);
connecting a first optical assembly (i.e. comprising at least optical elements 206, 208, 210) to the frame of the microscope,
wherein the first optical assembly includes a first set of optical elements (i.e. at least 206, 208, 210) fixably positioned and the first set of optical elements (i.e. at least 206, 208, 210) is pre-aligned to pass a first output light emitted from a first output pupil 204 of the first light source 202 to an imaging pupil of a source objective 218 fixably positioned on the frame (see e.g. Figure 1 and note that some frame would be required to hold and house the components); and
passing, by the first set of optical elements (i.e. at least 206, 208, 210), the first output light 202 through the source objective 218 towards a first specimen (i.e. on stage 10, see e.g. paragraph [0009]).
Deck fails to disclose
removably connecting the optical components to the frame;
the first set of optical components fixably position on the first plate.
However, Boeker et al. discloses (see e.g. Figure 1): a microscope system with an plate 12 (denoted “ exchangeable holder”, paragraph [0021]) holding an optical system 13 (denoted “changing device”). Further, making the microscope have adjustable light sources and optical paths in order to examine various specimen would be considered obvious to one of ordinary skill in the art, since it has held that the provision of adjustability, where needed, involves only routine skill in the art (in re Stevens101 USPQ 284 (CCPA 1954), see e.g. MPEP 2144.04).
Given the teachings of Boeker et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck with removably connecting the optical components to the frame; the first set of optical components fixably position on the first plate.
Making the microscope/spectroscope adjustable by exchanging optical elements would provide flexibility in the type and size of specimen that may be examined by the device.
In regard to claim 12, Deck, in view of Boeker et al., discloses the limitations as applied to claim 11 above, but fails to disclose
removing the first light source and the first optical assembly from the frame of the microscope; removably connecting a second light source to the frame of the microscope; removably connecting a second optical assembly to the frame of the microscope by removably connecting a second plate of the second optical assembly to the frame, wherein the second optical assembly includes a second set of optical elements fixably positioned on the second plate, and the second set of optical elements is pre-aligned to pass a second output light emitted from a second output pupil of the second light source to the imaging pupil of the source objective; and passing, by the second set of optical elements, the second output light through the source objective towards a second specimen.
However, Boeker et al. discloses (see e.g. Figure 1): a microscope system with an plate 12 (denoted “ exchangeable holder”, paragraph [0021]) holding an optical system 13 (denoted “changing device”). Further, making the microscope have adjustable light sources and optical paths in order to examine various specimen would be considered obvious to one of ordinary skill in the art, since it has held that the provision of adjustability, where needed, involves only routine skill in the art (in re Stevens101 USPQ 284 (CCPA 1954), see e.g. MPEP 2144.04).
Given the teachings of Boeker et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck with removing the first light source and the first optical assembly from the frame of the microscope; removably connecting a second light source to the frame of the microscope; removably connecting a second optical assembly to the frame of the microscope by removably connecting a second plate of the second optical assembly to the frame, wherein the second optical assembly includes a second set of optical elements fixably positioned on the second plate, and the second set of optical elements is pre-aligned to pass a second output light emitted from a second output pupil of the second light source to the imaging pupil of the source objective; and passing, by the second set of optical elements, the second output light through the source objective towards a second specimen.
Making the microscope/spectroscope adjustable by exchanging optical elements would provide flexibility in the type and size of specimen that may be examined by the device.
In regard to claim 13, Deck, in view of Boeker et al., discloses the limitations as applied to claim 12 above, but fails to disclose
wherein the first specimen is same as the second specimen.
However, it would have been obvious to one of ordinary skill in the art to use the microscope/spectroscope to examine various specimen types using different optics/lighting features.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck, in view of Boeker et al., with wherein the first specimen is same as the second specimen.
By providing multiple sources in the infrared, the specimen may be observed at various wavelengths in order to determine the chemical structure of the specimen for example.
In regard to claim 15, Deck, in view of Boeker et al., discloses the limitations as applied to claim 12 above, but fails to disclose
wherein when the first optical source and the first optical assembly are removably connected to the frame, the first output pupil of the first light source is critically imaged to the imaging pupil of the source objective; and when the second light source and the second optical assembly are removably connected to the frame, the second output pupil of the second light source is critically imaged to the imaging pupil of the source objective.
However, one of ordinary skill in the art before the effective filing date of the invention would recognize using a configuration in which when the first optical source and the first optical assembly are removably connected to the frame, the first output pupil of the first light source is critically imaged to the imaging pupil of the source objective; and when the second light source and the second optical assembly are removably connected to the frame, the second output pupil of the second light source is critically imaged to the imaging pupil of the source objective, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck, in view of Boeker et al., with wherein when the first optical source and the first optical assembly are removably connected to the frame, the first output pupil of the first light source is critically imaged to the imaging pupil of the source objective; and when the second light source and the second optical assembly are removably connected to the frame, the second output pupil of the second light source is critically imaged to the imaging pupil of the source objective.
Doing so would provide optical assemblies that are aligned such that the light is focused as desired on the specimen so that high quality imaging of the specimen may be conducted.
In regard to claim 16, Deck, in view of Boeker et al., discloses the limitations as applied to claim 12 above, but fails to explicitly disclose
wherein removing the first optical assembly from the frame of the microscope includes disconnecting the first plate of the first optical assembly from the frame of the microscope.
However, Boeker et al. discloses (see e.g. Figure 1): a microscope system with an plate 12 (denoted “ exchangeable holder”, paragraph [0021]) holding an optical system 13 (denoted “changing device”). Further, making the microscope have adjustable light sources and optical paths in order to examine various specimen would be considered obvious to one of ordinary skill in the art, since it has held that the provision of adjustability, where needed, involves only routine skill in the art (in re Stevens101 USPQ 284 (CCPA 1954), see e.g. MPEP 2144.04).
Given the teachings of Boeker et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck with wherein removing the first optical assembly from the frame of the microscope includes disconnecting the first plate of the first optical assembly from the frame of the microscope.
Making the microscope/spectroscope adjustable by exchanging optical elements would provide flexibility in the type and size of specimen that may be examined by the device.
In regard to claim 17, Deck, in view of Boeker et al., discloses the limitations as applied to claim 1 above.
Deck further discloses (see e.g. Figure 1):
wherein the first output light emitted from the first output pupil 204 of the first light source 202 is not limited by an aperture before entering the imaging pupil of the source objective.
In regard to claim 18, Deck disclose a spectroscopic microscope 100 (see e.g. paragraph [0009]), the microscope 100 including a frame and a source objective 218 fixably connected to the frame (see e.g. Figure 1 and note that some frame would be required to hold and house the components), the optical assembly comprising (see e.g. Figure 1):
a set of optical elements (i.e. at least 206, 208, 210) configured to pass an output light of a light source 202 to the source objective 218 (see e.g. paragraph [0009]),
wherein each of the set of optical elements (i.e. at least 206, 208, 210) is fixably positioned to optically align an output pupil of the light source 202 with an imaging pupil of the source objective 218 (see e.g. paragraph [0009]).
Deck fails to disclose
an optical assembly for interchangeably connecting to a spectroscopic microscope,
a plate configured to removably connect to the frame,
wherein each of the set of optical elements is fixably positioned on the plate.
However, Boeker et al. discloses (see e.g. Figure 1): a microscope system with an plate 12 (denoted “ exchangeable holder”, paragraph [0021]) holding an optical system 13 (denoted “changing device”). Further, making the microscope have adjustable light sources and optical paths in order to examine various specimen would be considered obvious to one of ordinary skill in the art, since it has held that the provision of adjustability, where needed, involves only routine skill in the art (in re Stevens101 USPQ 284 (CCPA 1954), see e.g. MPEP 2144.04).
Given the teachings of Boeker et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck with an optical assembly for interchangeably connecting to a spectroscopic microscope,
a plate configured to removably connect to the frame, wherein each of the set of optical elements is fixably positioned on the plate.
Making the microscope/spectroscope adjustable by exchanging optical elements would provide flexibility in the type and size of specimen that may be examined by the device.
In regard to claim 19, Deck, in view of Boeker et al., discloses the limitations as applied to claim 18.
Deck further discloses the input light is generated from a light source 202 (see e.g. Figure 1 and paragraph [0009]).
Deck fails to disclose
a light source removably connected to the frame of the microscope.
However, Boeker et al. discloses (see e.g. Figure 1): a microscope system with an plate 12 (denoted “ exchangeable holder”, paragraph [0021]) holding an optical system 13 (denoted “changing device”). Further, making the microscope have adjustable light sources and optical paths in order to examine various specimen would be considered obvious to one of ordinary skill in the art, since it has held that the provision of adjustability, where needed, involves only routine skill in the art (in re Stevens101 USPQ 284 (CCPA 1954), see e.g. MPEP 2144.04).
Given the teachings of Boeker et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck with a light source removably connected to the frame of the microscope.
Making the microscope/spectroscope adjustable by exchanging optical elements/light sources would provide flexibility in the type and size of specimen that may be examined by the device.
In regard to claim 20, Deck, in view of Boeker et al., discloses the limitations as applied to claim 18 above, but fails to disclose
wherein the optical assembly critically images the output pupil of the light source to the imaging pupil of the source objective.
However, one of ordinary skill in the art before the effective filing date of the invention would recognize using a configuration in which wherein the optical assembly critically images the output pupil of the light source to the imaging pupil of the source objective, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck, in view of Boeker et al., with wherein the optical assembly critically images the output pupil of the light source to the imaging pupil of the source objective.
Doing so would provide optical assemblies that are aligned such that the light is focused as desired on the specimen so that high quality imaging of the specimen may be conducted.
Claims 3 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Deck (US 2008/0049304 A1) in view of Boeker et al. (US 2008/0084606 A1) and further in view of Funk (US 2006/0012871 A1).
In regard to claim 3, Deck, in view of Boeker et al. discloses the limitations as applied to claim 1 above, and
wherein the first sets of optical elements and the second set of optical elements include at least one reflector with an off-axis aspheric surface.
Deck et al. does disclose using reflectors 206, 208, 210.
However, Funk disclose using an aspheric mirror in order to provide a more homogenized light beam (see e.g. paragraph [0028]).
Given the teachings of Funk, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck, in view of Boeker et al. with wherein the first sets of optical elements and the second set of optical elements include at least one reflector with an off-axis aspheric surface.
Providing the aspheric surface to the reflector would provide a more homogenized light beam for evenly illuminating the specimen.
In regard to claim 14, Deck, in view of Boeker et al. discloses the limitations as applied to claim 12 above, and
wherein the first sets of optical elements and the second set of optical elements include at least one reflector with an off-axis aspheric surface.
Deck et al. does disclose using reflectors 206, 208, 210.
However, Funk disclose using an aspheric mirror in order to provide a more homogenized light beam (see e.g. paragraph [0028]).
Given the teachings of Funk, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck, in view of Boeker et al. with wherein the first sets of optical elements and the second set of optical elements include at least one reflector with an off-axis aspheric surface.
Providing the aspheric surface to the reflector would provide a more homogenized light beam for evenly illuminating the specimen.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Deck (US 2008/0049304 A1) in view of Boeker et al. (US 2008/0084606 A1) and further in view of Ji et al. (CN 209014145, of which an English translation is attached).
In regard to claim 10, Deck, in view of Boeker et al., discloses the limitations as applied to claim 1 above, but fails to disclose
wherein at least one of the first and second set of optical elements includes a first and a second concave reflectors and a convex reflector, wherein the first output light or the second output light sequentially reaches the first concave reflector, the convex reflector, and the second concave reflector.
However, Ji et al. discloses (see e.g. Figure 1):
wherein at least one of the first and second set of optical elements includes a first and a second concave reflectors 2, 4 and a convex reflector 3, wherein the first output light or the second output light sequentially reaches the first concave reflector 2, the convex reflector 3, and the second concave reflector 4 (see e.g. page 3, lines 12-14).
Given the teaching of Ji et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Deck, in view of Boeker et al. with wherein at least one of the first and second set of optical elements includes a first and a second concave reflectors and a convex reflector, wherein the first output light or the second output light sequentially reaches the first concave reflector, the convex reflector, and the second concave reflector.
Providing the combination of concave and convex reflecting surfaces will result in a uniform dispersion, larger aperture, high spectral resolution, among other advantages (see e.g. abstract of Ji et al.).
Conclusion
THIS ACTION IS MADE FINAL. 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 JESSICA M MERLIN whose telephone number is (571)270-3207. The examiner can normally be reached Monday-Thursday 7:00AM-5:00PM.
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/JESSICA M MERLIN/Primary Examiner, Art Unit 2871