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 .
Election/Restrictions
In response to the Election/Restriction mailed to applicant on 07/16/2025, applicant has made an election without traverse of Invention I, Species (A) in the reply filed on 11/09/2025.
As a result of applicant’s election, claims 1-4, 7-9 and 15 are examined in the present office action, and claims 5-6 and 10-14 have been withdrawn from further consideration as being directed to non-elected Inventions and/or non-elected Species.
Applicant should note that the non-elected claims 5-6 and 10-14 will be rejoined if the linking/generic claim 1 is later found as an allowable claim
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings contain fourteen sheets of figures 1-24 were received on 06/13/2023. These drawings are approved by the examiner.
Specification
The lengthy specification 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
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.
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.
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 microscope body”, “a relay optical system”, “a second reflection optical system”, “a third reflection optical system”, and “an additional optical system” as recited in each of claims 1 and 15;
b) “an imaging device” as recited in each of claims 7 and 15;
c) “a light path switching mechanism” as recited in claim 9; and
d) “a first reflection optical system” as recited in claim 15.
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
10. 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.
11. Claims 7-9 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 7 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 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, by the feature thereof “the first reflection optical system … to the imaging device” (lines 4-6).
Applicant is respectfully invited to review the specification, in particular, in pages 6-11 and fig. 2, for example, in which the specification discloses a first reflection optical system (25) in the form of a beam splitter wherein the beam splitter splits an incident light flux (from the imaging lens (24)) into a first part and a second part in which first part of the light flux is reflected and bend in a first horizontal direction (to the relay optical system (26)) and transmits and guides the second part (in a vertical direction) to an imaging device (40). The specification does not support for the feature that part of the light flux are both “reflects and bends” in a horizontal direction and “transmits and guides” to an imaging device as claimed in the mentioned feature.
b) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiency thereof.
12. 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.
13. Claims 1-4 and 7-9 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) the feature thereof “a relay optical system … the imaging lens” (lines 6-8) makes the claim indefinite because it is unclear about the relationship(s) between “an object plane of the eyepiece” and “a secondary image” formed by the relay optical system. In particular, it is unclear from the claimed language whether the so-called “a secondary image” is formed/located on “an object plane of the eyepiece” or not; and
a2) the feature thereof “an additional optical system … the eyepiece” (lines 19-20) makes the claim indefinite because it is unclear what “the light flux” (line 19) applicant implies in the mentioned feature.
Applicant is respectfully invited to review the claim on lines 4-18 in which the claim recites four different “light flux” as follow: One light flux incident on the imaging lens (see line 4); one light flux from the imaging lens which light flux is reflected and bend by a first reflection optical system (see lines 9-10); one light flux passed through the first reflection optical system which light flux is reflected and bend by a second reflection optical system (see lines 11-14); and one light flux passed through the second reflection optical system which light flux is reflected and bend by a third reflection optical system (see lines 15-18). Thus, which “light flux” does applicant mean by “the light flux” on line 19?
b) Claim 2 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 direction” (line 4) lacks a proper antecedent basis.
c) Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reasons as set forth in element a) above.
d) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiency thereof.
Claim Rejections - 35 USC § 102
14. 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.
15. 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.
16. Claims 1-3 and 15, as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura (US Patent No. 7,050,225).
Nakamura discloses a lens-barrel device attached to a microscope body of a microscope.
a) Regarding present claims 1 and 15, the microscope having a lens-barrel device attached to a microscope body as described in columns 7-9 and shown in figs. 4-5 comprises a microscope body (40), an objective (3), an eyepiece (62), an imaging device (17), and a lens-barrel device (47, 57, 43, 44).
Regarding the structure of the lens-barrel device, the lens-barrel device as described in the mentioned columns and figures comprises the following features:
a1) an eyepiece sleeve (44) for supporting the eyepiece (62);
a2) an imaging lens (49) that a light flux from the microscope body (40) is made incident on;
a3) a relay optical system (56, 55) that relays a primary image (54) to an object plane of the eyepiece and forms a secondary image (61) on the object plane wherein the primary image (54) is formed by the imaging lens (49);
a4) a first reflection optical system (50) that reflects and bends a light flux from the imaging lens (49) in a first horizontal direction;
a5) a second optical system (52) that is disposed on a first horizonal plane where the first optical reflection system (50) is disposed wherein the second reflection optical system (52) reflects and bends the light flux passed through the first reflection optical system (50) in a vertical upward direction;
a6) a third optical system (59) that is disposed on a second horizontal plane that is different from the first horizontal plane wherein the third optical system (59) reflects and bends the light flux passed through the second reflection optical system (52) in a second horizontal direction;
a7) an additional optical system (14) that transmits the light flux for forming an image that is different from the secondary image on the object plane of the eyepiece; and
a8) an optical element (60) disposed on the second horizontal plane for guiding the light flux from the additional optical system (14) to a light path to the object plane of the eyepiece.
b) Regarding present claim 2, there is a pair of reflection surfaces (59, 60) disposed on the second horizontal plane that reflect the light flux that travel in a horizontal direction wherein the pair of refection surfaces (59, 60) make a direction of an emitted light flux different from a direction of an incident light flux by 90 degrees in a horizonal plane.
c) Regarding present claim 3, the pair of refection surfaces (59, 60) is disposed in a second horizonal plane and one of the pair of reflection surfaces (59, 60) is the optical element (60).
Allowable Subject Matter
17. Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. It is noted that the rewritten/amended claim 4 needs to comply with the requirement of rule 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See the rejection of claims 1-4 and 15 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the present office action.
18. The following is a statement of reasons for the indication of allowable subject matter:
The lens-barrel device attached to a microscope body as recited in the dependent claim 4 is allowable with respect to the prior art, in particular, the US Patent No 7,050,225 and the EP 4 009 095 by the limitations regarding the arrangement of the pair of reflections surfaces and at least one of the second and third reflection optical systems as recited in the features thereof “one of the pair of reflection surfaces … the eyepiece” (claim 4 on lines 2-6), Such arrangements of the pair of reflections surfaces and at least one of the second and third reflection optical systems as recited in the claim 4 on lines 2-6 in a lens-barrel device having an eyepiece sleeve supporting an eyepiece, an imaging lens, a relay optical system, three reflection optical systems, an additional optical system and an optical element with features thereof “an eyepiece sleeve … the eyepiece” recited in its base claim 1 on lines 3-22 is not disclosed in the prior art.
Conclusion
19. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
20. The US Patent No. 6,097,538 is cited as of interest in that it discloses a microscope having a lens-barrel device attached to a microscope body wherein the lens-barrel device has similar structure as that recited in the present claims 1 and 15 except that the second reflection optical system (46) does not reflect the light flux in a vertical upward direction.
21. 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.
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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