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.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 11, 2026 has been entered.
Response to Amendment
Receipt is acknowledged of applicant’s amendment filed May 11, 2026. Claims 1-20 are pending and an action on the merits is as follows.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In regard to independent claim 1, applicant’s arguments, on pages 6-8 of the Remarks, that the previously applied prior art fails to disclose all of the limitations, as newly amended, have been fully considered and are appreciated. However, the newly cited rejection discloses all of the limitations, as set forth below. Similar arguments apply to independent claims 11 and 18.
Therefore claims 1-20 are rejected, as set forth below.
Claim Objections
Claim 4 objected to because of the following informalities: “at least one reflectors” should be replaced by “at least one reflector” in order to correct what appears to be typographical error. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 11 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Natori et al. (US 2006/0187499 A1).
In regard to claim 11, Natori et al. discloses a method for examining a specimen A (see e.g. Figure 1 and paragraph [0042]) with a microscope 2 (denoted “optical fluoroscopy apparatus”, see e.g. paragraph [0038]), the method comprising (see e.g. Figures 1-7):
removably connecting (i.e. via connector 22, see e.g. paragraph [0044]) a first light source 3 (denoted “light source unit”, see e.g. paragraph [0040] and note it is removably connected via element 22) to a frame 5 (denoted “apparatus main body”, see e.g. paragraph [0044] and Figure 1) of the microscope 2;
removably connecting a first optical assembly 21 (denoted “cassette unit”, see e.g. paragraph [0044] and Figure 1) to the frame of the microscope 5 by removably connecting a first plate (i.e. part of 21) of the first optical assembly 21 to the frame 5,
wherein the first plate (i.e. part of cassette 21) is positioned between the first output pupil of the first light source 3 and an imaging pupil (see e.g. Figure 1 and note the output pupil will be at connection to optical fiber 7) of the source objective 20 (see e.g. Figure 1),
wherein the first optical assembly 21 includes a first set of optical elements 24-27 (see e.g. paragraph [0046]) fixably positioned on the first plate (i.e. part of cassette 21), and the first set of optical elements 24-27 is pre-aligned to pass a first output light emitted from the first output pupil of the first light source 3 to the imaging pupil of the source objective 20 fixably positioned on the frame 5 (see e.g. Figure 1); and
passing, by the first set of optical elements 24-27, the first output light through the source objective 20 towards a first specimen A (see e.g. Figure 1).
In regard to claim 17, Natori et al. discloses the limitations as applied to claim 11 above, and
wherein the first output light emitted from the first output pupil of the first light source 3 is not limited by an aperture before entering the imaging pupil of the source objective 20 (see e.g. Figure 1 and note there are no apertures included in the figure).
In regard to claim 18, Natori et al. discloses an optical assembly 21 for interchangeably connecting to a spectroscopic microscope (This limitation is intended use. It is noted that the recitation of an intended use limitation must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.), the microscope 2 (denoted “optical fluoroscopy apparatus”, see e.g. paragraph [0038]) including a frame 5 and a source objective 20 fixably connected to the frame 5, the optical assembly 21 comprising (see e.g. Figures 1-7):
a plate (i.e. part of 21) configured to removably connect to the frame 5, wherein the plate (i.e. part of 21) is positioned between an output pupil of a light source 3 and an imaging pupil of the source objective 20 (see e.g. Figures 1-7), and
a set of optical elements 24-27 configured to pass an output light of the light source 3 to the source objective 20, wherein each of the set of optical elements 24-27 is fixably positioned on the plate to optically align the output pupil of the light source 3 with the imaging pupil of the source objective 20 (see e.g. Figures 1-7).
In regard to claim 19, Natori et al. discloses the limitations as applied to claim 18 above, and
wherein the input light is generated from a light source 3 removably connected to the frame 5 of the microscope 2 (This limitation is intended use. It is noted that the recitation of an intended use limitation must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art).
In regard to claim 20, Natori et al. discloses the limitations as applied to claim 18 above, and
wherein the optical assembly critically images the output pupil of the light source to the imaging pupil of the source objective (This limitation is intended use. It is noted that the recitation of an intended use limitation must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. The limitation also appears to be functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, the optical assembly may be used in a microscope that satisfies this limitation.).
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, 4-7, 12, 13, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Natori et al. (US 2006/0187499 A1) in view of Yamawaki et al. (US 2009/0109525 A1).
In regard to claim 1, Natori et al. discloses a microscope 2 (denoted “optical fluoroscopy apparatus”, see e.g. paragraph [0038]) for examining a specimen A (see e.g. Figure 1 and paragraph [0042]), the microscope 2 configured to receive a first light source 3 (denoted “light source unit”, see e.g. paragraph [0040] and note it is removably connected via element 22) or a second light source, the first light source being configured to emit a first output light through a first output pupil (see e.g. Figure 1 and note the output pupil will be at connection to optical fiber 7), and the microscope comprising (see e.g. Figures 1-7):
a frame 5 (denoted “apparatus main body”, see e.g. paragraph [0044] and Figure 1);
a source objective 20 (denoted “objective lens”, see e.g. paragraph [0064]) fixably connected to the frame 5 (see e.g. Figure 1);
a first optical assembly 21 (denoted “cassette unit”, see e.g. paragraph [0044] and Figure 1) comprising:
a first plate (i.e. part of cassette 21) configured to removably connect to the frame 5 (see e.g. paragraph [0044] for removable connection),
wherein the first plate (i.e. part of cassette 21) is positioned between the first output pupil of the first light source 3 and an imaging pupil (see e.g. Figure 1 and note the output pupil will be at connection to optical fiber 7) of the source objective 20 (see e.g. Figure 1), and
a first set of optical elements 24-27 (see e.g. paragraph [0046]) configured to pass the first output light to the source objective 20, wherein the first set of optical elements 24-27 are fixably positioned on the first plate (i.e. part of cassette 21) to optically align the first output pupil of the first light source 3 with the imaging pupil of the source objective 20 (see e.g. paragraph [0046] for optical components 24-27 in cassette unit 21 routing the light); and
a second optical assembly comprising (see e.g. paragraph [0055] for additional cassette 21):
a second plate (i.e. part of cassette unit 21) configured to removably connect to the frame 5 (see e.g. paragraph [0044] for removable connection and paragraph [0055] for additional unit cassette unit 21), wherein the first plate (i.e. part of cassette 21) is positioned between the first output pupil of the first light source 3 and an imaging pupil (see e.g. Figure 1 and note the output pupil will be at connection to optical fiber 7) of the source objective 20 (see e.g. Figure 1), and
a second set of optical elements 24-27 (see e.g. paragraph [0046]) configured to pass the light to the source objective, wherein the second set of optical elements 24-27 are fixably positioned on the second plate (i.e. part of cassette unit 21) to optically align the output pupil of the light source 3 with the imaging pupil of the source objective 20 (see e.g. Figure 1).
Natori et al. fails to disclose
the second light source being configured to emit a second output light through a second output pupil.
However, Yamawaki discloses
the second light source being configured to emit a second output light through a second output pupil (see e.g. paragraphs [0010], [0027] for additional light source at a second wavelength which inherently has a second output pupil).
Given the teachings of Yamawaki, 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 Natori et al. with the second light source being configured to emit a second output light through a second output pupil.
Providing additional light sources to the already removably connected light source of Natori et al. would allow for a different set of wavelengths to be used and matched to the needs of the experiment/sample.
In regard to claim 2, Natori et al., in view of Yamawaki, 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 Natori et al., in view of Yamawaki, 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, Natori et al. discloses the limitations as applied to claim 1 above, and
at least one reflectors 17a-b fixably (see e.g. Figure 1 and note that the mirrors are rotatable and therefore must be fixably connected to an axis on the frame 5) connected to the frame 5 to pass light exiting from either the first optical assembly 21 or the second optical assembly towards the source objective 20 (see e.g. Figure 1).
In regard to claim 5, Natori et al. discloses the limitations as applied to claim 1 above, and
wherein the source objective 20 directs light towards a specimen A (see e.g. Figure 1).
In regard to claim 6, Natori et al. discloses the limitations as applied to claim 5 above, and
a detector 4 (denoted “light detecting unit”) fixably (see e.g. Figure 1 and note the detector may be fixed via element 23) connected to the frame 5 for collecting light passed through the specimen A (see e.g. paragraph [0041]).
In regard to claim 7, Natori et al. discloses the limitations as applied to claim 1 above, but fails to disclose
wherein the first output light and the second output light are infrared light.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize using wherein the first output light and the second output light are infrared light, 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 (see e.g. MPEP 2144.05).
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 Natori et al. with wherein the first output light and the second output light are infrared light.
Selecting the light wavelength that coordinates to the specimen that is being examined would be considered within ordinary skill in the art.
In regard to claim 12, Natori et al. discloses the limitations as applied to claim 11 above, and
removing the first light source 3 and the first optical assembly 21 from the frame 5 of the microscope (see e.g. Figure 3);
removably connecting a second optical assembly 21 to the frame of the microscope 5 by removably connecting a second plate (i.e. part of 21) of the second optical assembly 21 to the frame 5 (see e.g. paragraph [0055] for additional cassette 21),
wherein the second optical assembly 21 includes a second set of optical elements 24-27 (see e.g. paragraph [0046]) fixably positioned on the second plate (i.e. part of 21, see e.g. Figure 1), and
the second set of optical elements 24-27 is pre-aligned to pass output light emitted from an output pupil of the light source(see e.g. Figure 1 and note the output pupil will be at connection to optical fiber 7) to the imaging pupil of the source objective 20 ; and
passing, by the second set of optical elements 4-27, the output light through the source objective 20 towards a second specimen A.
Natori et al. fails to disclose
removably connecting a second light source to the frame of the microscope.
However, Yamawaki discloses
removably connecting a second light source to the frame of the microscope (see e.g. paragraphs [0010], [0027] for additional light source at a second wavelength which inherently has a second output pupil).
Given the teachings of Yamawaki, 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 method of Natori et al. with removably connecting a second light source to the frame of the microscope.
Providing additional light sources to the already removably connected light source of Natori et al. would allow for a different set of wavelengths to be used and matched to the needs of the experiment/sample.
In regard to claim 13, Natori et al., in view of Yamawaki, 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 Natori et al., in view of Yamawaki, with wherein the first specimen is same as the second specimen.
Using a same specimen with different experimental conditions may provide additional insight into the specimen.
In regard to claim 15, Natori et al. discloses the limitations as applied to claim 12 above, and
wherein when the first optical source 3 and the first optical assembly 21 are removably connected to the frame 5 (see e.g. paragraph [0055]), and wherein the second optical assembly 21 is removably connected to the frame 5 (see e.g. paragraph [0055]).
Natori et al. fails to disclose
the first output pupil of the first light source is critically imaged to the imaging pupil of the source objective; wherein the second light source is 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, Yamawaki discloses
wherein the second light source is removably connected to the frame (see e.g. paragraphs [0010], [0027] for additional light source at a second wavelength which inherently has a second output pupil).
Given the teachings of Yamawaki, 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 Natori et al. with wherein the second light source is removably connected to the frame.
Providing additional light sources to the already removably connected light source of Natori et al. would allow for a different set of wavelengths to be used and matched to the needs of the experiment/sample.
Natori et al., in view of Yamawaki, fails to disclose
the first output pupil of the first light source is critically imaged to the imaging pupil of the source objective; 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 the first output pupil of the first light source is critically imaged to the imaging pupil of the source objective; 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 method of Natori et al., in view of Yamawaki, with the first output pupil of the first light source is critically imaged to the imaging pupil of the source objective; 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, Natori et al. discloses the limitations as applied to claim 12 above, and
wherein removing the first optical assembly 21 from the frame of the microscope 2 includes disconnecting the first plate (i.e. part of 21) of the first optical assembly 21 from the frame of the microscope 5 (see e.g. Figure 3).
Claims 3 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Natori et al. (US 2006/0187499 A1) in view of Yamawaki et al. (US 2009/0109525 A1) and further in view of Funk (US 2006/0012871 A1).
In regard to claim 3, Natori et al., in view of Yamawaki, 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.
Natori et al. does disclose using reflectors 26, 27 (see e.g. Figure 1).
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 Natori et al., in view of Yamawaki, 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, Natori et al., in view of Yamawaki, discloses the limitations as applied to claim 12 above.
Natori et al. further discloses using reflectors 26, 27 (see e.g. Figure 1).
Natori et al., in view of Yamawaki, fails to disclose
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.
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 Natori et al., in view of Yamawaki, 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.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Natori et al. (US 2006/0187499 A1) in view of Yamawaki et al. (US 2009/0109525 A1) and further in view of Deck (US 2008/0049304 A1).
In regard to claim 8, Natori et al., in view of Yamawaki et al., fails to disclose
wherein at least one of the first light source and the second light source outputs a modulated light.
However, Deck discloses
wherein at least one of the first light source 202 and the second light source outputs a modulated light (see e.g. paragraph [0009]).
Given the teachings of Deck, 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 Natori et al., in view of Yamawaki, with wherein at least one of the first light source and the second light source outputs a modulated light.
Providing modulated light would allow additional characteristics of the specimen to be recorded.
In regard to claim 9, Natori et al., in view of Yamawaki, discloses the limitations as applied to claim 1 above, but fails to disclose
wherein the microscope is a spectroscopic microscope.
However, Deck discloses (see e.g. Figure 1):
wherein the microscope is a spectroscopic microscope 100 (see e.g. paragraph [0002]).
Given the teachings of Deck, 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 Natori et al., in view of Yamawaki, with wherein the microscope is a spectroscopic microscope.
Applying the removable components to a spectroscopic microscope would increase the functionality of said microscope.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Natori et al. (US 2006/0187499 A1) in view of Yamawaki et al. (US 2009/0109525 A1) and further in view of Ji et al. (CN 209014145).
In regard to claim 10, Natori et al., in view of Yamawaki, 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 Natori et al., in view of Yamawaki, 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
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/JESSICA M MERLIN/Primary Examiner, Art Unit 2871
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