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 amendment filed by applicant on 12/30/2025. It is noted that in the amendment, applicant has made changes to the drawings and the claims. There is not any change being made to the abstract and the specification.
2A) Regarding the drawings, applicant has submitted a set of twelve replacement sheets contained figures 1, 2(a)-2(i), 3-4, 5(a)-5(b), 6, and 7(a)-7(b); and
2B) Regarding the claims, applicant has amended claims 1, 6, 9 and 12, and canceled claims 3-5 and 10-11.
Response to Arguments
The amendments to the drawings and the claims as provided in the amendment of 12/30/2025 and applicant's arguments provided in the mentioned amendment, pages 6-14, have been fully considered and resulted the following conclusions:
3A) Regarding the claims, because applicant has canceled claims 3-5 and 10-11 and has not added any claim into the application, thus as amended, the pending claims are claims 1-3, 6-9 and 12-19 in which claims 1-2, 6-9 and 12-13 are examined in the present office action, and claims 14-19 have been withdrawn from further consideration as being directed to a non-elected Invention. Applicant should note that the non-elected claims 14-19 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 07/31/2025, the amendments to the drawings as provided in the amendment of 12/30/2025, and applicant’s arguments provided in the mentioned amendment, page 13, 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 rejections of claims 3-6 and 9-12 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 07/31/2025, the amendments to the claims as provided in the amendment of 12/30/2025, and applicant’s arguments provided in the mentioned amendment, pages 13-14, have been fully considerer and resulted that the amendments to the claims raise new rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, to claims 1-2, 6-9 and 12-13 as provided in the present office action.
3D) Regarding the rejection of claims 1-2, 7-9 and 13 under 35 U.S.C. 102(a)(1) as being anticipated by Kato et al (US Patent No. 4,465,938), the rejection of claims 3-6 and 10-11 under 35 U.S.C. 103 as being unpatentable over Kato et al in view of Draaijer et al (US Patent No. 7,124,946), and the rejection of claim 12 under 35 U.S.C. 103 as being unpatentable over Kato et al in view of Trevisan et al (US Publication No. 2016/0047827) as set forth in the office action of 07/31/2025, the amendments to the claims as provided in the amendment of 12/30/2025, and applicant’s arguments provided in the mentioned amendment, pages 7-12, have been fully considered but they are not persuasive. Thus, the prior art used in the rejection of claims 1-13 set forth in the mentioned office action is applied in the rejection of claims 1-2, 6-9 and 12-13 provided in the present office action.
First, applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Second, 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, see applicant’s arguments in pages 8-9, 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).
Third, regarding applicant’s arguments as provided in pages 10-12, it is noted that applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant is respectfully invited to review the sample plate with the claimed language as provided/recited in the claims. Each feature with claimed language recited/provided in the claims is addressed/met by the feature(s) yielded from the combined product of the applied prior art. Applicant should note that since there is not any specific feature/limitation of the cited feature being provided in the present claims, thus cited feature in the claim is given a board interpretation. The feature/limitation regarding the coincidence of the focal point and the center of curvature of the concave recess as recited in claim 1 on lines 8-9 is subjected to a rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, see the present office action and the office action of 07/31/2025 with similar reason applied to claim 5, now canceled (but similar feature is now recited in amended claim 1) and such feature is addressed in the office action of 07/31/2205 and presented in the present office action.
Drawings
The twelve replacement sheets contain figures 1, 2(a)-2(i), 3-4, 5(a)-5(b), 6, and 7(a)-7(b) were received on 12/30/2025.
As a result of the changes to the drawings, the application now contains a total of twelve sheets of figures 1, 2(a)-2(i), 3-4, 5(a)-5(b), 6, and 7(a)-7(b) which includes twelve replacement sheets contained figures 1, 2(a)-2(i), 3-4, 5(a)-5(b), 6, and 7(a)-7(b) as filed on 12/30/2025 and not any sheet as originally filed. The mentioned twelve replacement sheets of figures 1, 2(a)-2(i), 3-4, 5(a)-5(b), 6, and 7(a)-7(b) are approved by the examiner.
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 1-2, 6-9 and 12-13 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 for the following reasons:
a1) each of the features thereof “the surface” (line 2), “the surface” (line 7), “the focal point” (line 8), and “the center of curvature” (line 9) each lacks a proper antecedent basis; and
a2) the feature thereof “the lens being arranged … the concave recess” (lines 8-9) makes the claim indefinite because it is unclear from the claimed language how the lens which is arranged opposite to the recess such that the focal point of the lens coincides with the center of curvature of the concave recess.
In other words, how can a focal point of a lens having a portion of a surface of a sphere coincide with the center of a concave recess defined by a portion of a sphere? The claim has not provided any feature(s)/limitation(s) regarding the surface of the sphere, see “the surface of a sphere” on line 7, which the lens faces has a portion and the surface of the sphere, see “the surface of a sphere” on line 4, which concave recess has a portion. It is unclear from the claimed language whether “a sphere” recited on line 8 is “a sphere” recited on line 4 (applicant should note that the claim recites “a sphere”, not --the sphere-- on line 8)
b) Claim 6 is 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:
b1) the feature thereof “the lens face center of curvature of the lens” (line 3) lacks a proper antecedent basis. Further, what does applicant mean by the mentioned feature?
b2) the feature thereof “when measured at the lens face … less than Π/4 radians” (lines 3-5) makes the claim indefinite due to the use of term “when” in the mentioned feature. Applicant should note that the term “when” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d); and
c) Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the recess wall” (line 1) lacks a proper antecedent basis.
d) Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the ridge wall” (lines 2-3) lacks a proper antecedent basis.
e) The remaining claims are dependent upon the rejected base claim) thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 103
8. 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.
9. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
10. Claims 1-2, 6-9 and 13, as best as understood, are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al (US Patent No. 4,465,938) in view of Draaijer et al (US Patent No. 7,124,946) (both of record).
Kato et al discloses an apparatus for determining various types of blood by detecting a blood corpuscular agglutination pattern formed on a conical bottom surface of a reaction vessel, see column 1.
a) Regarding present claims 1, 6 and 13, the apparatus as described in columns 3-5 and shown in figs. 6-7 and 11 comprises the following features:
a1) a microplate (12) having a first face and a second face wherein the first face comprises a plurality of recesses (11-1 – 11-6) which each recess has a concave configuration to receive a sample, i.e., particle agglutination pattern of blood, and a flat second face opposite to the first face;
a2) an optical correction plate having a first face and a second face wherein the first face is a flat face and the second face comprises a plurality of projections (17-1- 17.6) which each projection acts as a lens. Applicant should note that while the present claim 1 recites a lens; however, there is not any specific limitation of the so-called “lens” being provided/recited, and the transparent projection, i.e., 17-1 -17.6, acts as a lens for transmitting an incident light, see fig. 6.
a3) each of the microplate (12) and the correction plate (17) is made by transparent material. Further, in column 4, Kato et al discloses that the material of the plate (17) is the same material as that of the microplate (12), see column 4 on lines 19-22; and
a4) the correction plate (17) is secured or may be integrally formed with the microplate (12), see column 6 and fig. 11, thus, the flat face of the microplate (12) and the flat face of the plate (17) is the same face, and as a result, the integrally element constituted by the microplate (12) and the correction plate (17) is a single element having a transparent substrate having two faces in which a first face comprises a plurality of recesses (11-1 – 11-6) and the second face, opposite to the first face, comprises a plurality of projections/lenses (17-1 – 17-6) wherein each protection/lens is located opposite to its corresponding recess.
Regarding the feature of a microscope recited in the preamble of the claim 1, while Kato et al does not clearly disclose that the apparatus is a microscope; however, it is inherent or within level of one skill in the art to utilize the system provided by Kato et al in a microscope for examining blood samples.
It is noted that while Kato et al disclose that each of recesses (16-1 – 16-6) has a concave shape/configuration and the shape of each of the projections/lenses (17-1 – 17-6) has a triangular with a ridge shape/configuration, see fig. 6, wherein the shape of the recess at the bottom portion of the recess and the lens shape has similar shape, see figs 8-11; however, Kato et al does not disclose that the recess and the lens face each is shaped as a portion of a spherical surface and the focal point of the lens face coincides with the center of curvature of the recess.
However, a plate member having a plurality of recesses wherein the recess has a circular shape/configuration is known to one skilled in the art as can be seen in the optical device provided by Draaijer et al. In particular, Draaijer et al discloses an optical device having a plate member (7) having a plurality of recesses (6) which each supports a sample (5), see columns 2-3 and fig. 1 wherein each recess has a circular shape/configuration, see column 3 and fig. 3. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to modify the shape/configuration of each of the recess and the lens surface in the plate constituted by the microplate (12) and the correction plate (17) integrally formed together as provided by Kato et al as the one having a circular shape/configuration as suggested by Draaijer et al for the purpose of meeting a particular application. See In re Dailey, 149 USPQ 47 (CCPA 1976).
Regarding the feature regarding the focal point of the lens surface and the center of curvature of the recess, it would have been obvious in the art to modify the combined product provided by Kato et al and Draaijer et al by adjusting/dimensioning the radii of curvatures of the lens face and the recess so that the focal point of the lens face coincides with the center of curvature of the recess wall to compensate for the formation/focus point of light passing through the combined product to correct/compensate for image aberrations.
b) Regarding present claim 2, each projection/lens (17-1 – 17-6) is integrally formed on the second face of the combined element constituted by the microplate (12) and the plate (17).
c) Regarding present claim 7, each of the recess (16-1 – 16-6) is in the form of a groove and each projection/lens (17-1 – 17-6) is in the form of a ridge wherein the groove and the ridge extend along a length direction, i.e., the direction defined by a light path from light sources (13-1 – 13-3) to detectors (16-1 – 16-6), see fig. 3.
d) Regarding present claims 8-9, the recess wall of the recess (11-1, for instance) and the projection/lens (17-1, for instance, each is shaped such that each has a portion of a circle in a plane orthogonal/normal to the length direction, see Kato et al in columns 3-5 and fig. 7
11. Claim 12, as best as understood, is rejected under 35 U.S.C. 103 as being unpatentable over Kato et al in view of Trevisan et al (US Publication No. 2016/0047827, of record).
It is noted that while Kato et al discloses that the microplate (12) and the correction plate (17) each is made by a transparent material, see column 4 lines 19-22; however, Kato et al does not positively disclose that the material for making the microplate and the plate is silicon based organic polymer such as polydimethylsiloxane. However, a slide for supporting a sample wherein the slide is made by the polydimethylsiloxane material is known to one skill in the art as can be seen in the optical device for analyzing blood sample provided by Trevisan et al, see paragraph [0091] which discloses the slide (30) is made by polydimethylsiloxane material. Thus, it would have been obvious to one skill in the art to use any suitable transparent material including polydimethylsiloxane material as suggested by Trevisan et al to make the element having recesses on a first face for supporting samples and projections/lenses on a second face as provided by Kato et al to meet a particular application.
Conclusion
12. The Korean refence No. 10-2017-0052439 is cited as of interest in that it discloses a slide supporting a sample wherein the slide has a recess on its front surface for supporting the sample and a lens portion located on a second surface opposite the recess.
13. 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.
14. 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THONG Q NGUYEN/Primary Examiner, Art Unit 2872