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 .
Drawings
The drawings were received on 10 November 2025. These drawings are acceptable.
Claim Rejections - 35 USC § 112
The following is a quotation 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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Light conduit (also known as light guide or fiber) details are known to one of ordinary skill in the art (e.g., see “… If the tip is too rigid or not rigid enough, it may be discarded. (The desired rigidity of the fiber can depend on the tissue that is being penetrated and the specific application for which the fiber is being designed, as with the other physical parameters (e.g., length of tip, taper angle, etc.).) …” in paragraph 73 of Acker). While the specification discloses that Fig. 2 shows one example of a LPM (100) comprising a diameter tapered towards one end (e.g., see “… The second portion (126) defines a tapered internal diameter which is wider at its connection point with the first portion (124) compared to the end positioned adjacent the specimen (106) … using N-LASF46A glass manufactured by SCHOTT North America, Inc. of Rye Brooke, NY …” in paragraphs 66 and 67 cited by applicant as “support for this amendment”), there does not appear to be any disclosure of rigid. Therefore, there does not appear to be a written description of the newly added claim limitation “rigid” in the application as filed.
While the specification discloses a combination of low, high, and low index glasses can be configured to avoid leakage (e.g., see “… With NA 0.7 inside the light pipe, common prism mirror designs can induce leakage. Thus, a combination of low, high, and low index glasses can be configured to avoid leakage …” in paragraph 72 cited by applicant as “Support for this amendment”) and common prism mirror designs can induce leakage (e.g., see
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), there does not appear to be any disclosure of the bent portion includes an indexmatched optical folding element positioned therein, wherein the optical folding element is configured to direct the emitted signal through the bent portion from the distal end of the first portion toward the proximal end of the first portion while maintaining numerical aperture without leakage. Therefore, there does not appear to be a written description of the newly added claim limitation “wherein the bent portion includes an indexmatched optical folding element positioned therein, wherein the optical folding element is configured to direct the emitted signal through the bent portion from the distal end of the first portion toward the proximal end of the first portion while maintaining numerical aperture without leakage” in the application as filed.
While the specification discloses index-matching optical adhesive for the filter and optically coupling for main body 102 (e.g., see “… main body (102) includes a first portion (124) optically coupled with the detector (108) at one end, and optically coupled with a second portion (126) at the opposing end … light pipe is composed of three general regions: the front tapered glass (i.e., the second portion (126)), the cube dichroic beam splitter (110), and the straight extension glass (i.e., the first potion (124)) connected to the detector (108) … absorption-based bandpass filter (116), such as a BG40 manufactured by SCHOTT North America, Inc. of Rye Brooke, NY can be bonded between the main body (102) and the detector (108) by index-matching optical adhesive …” in paragraphs 66 and 67 cited by applicant as “support for this amendment”), there does not appear to be any disclosure of index-matching optical adhesive for main body 102. Therefore, there does not appear to be a written description of the newly added claim limitation “where the cube dichroic beam splitter includes a square geometric body, and wherein the distal end of the first portion and the proximal end of the second portion each include square optical facets bonded to the cube dichroic by index-matching adhesive” in the application as filed.
While the specification discloses embed optical focusing elements within the front tapered light pipe to achieve higher excitation NA (e.g., see “… one can embed optical focusing elements within the front tapered light pipe to achieve higher excitation NA. One method is to form the tapered portion of the light pipe with one or more glass lenses (202, 204,206, and/or 208), as shown in FIG. 13. These lenses (202,204,206,208) all have four flat surfaces on their respective sides to form the boundaries of the light pipes, and they each have a spherical surface on the top and/or bottom. For high NA focusing, glass of higher index can be used for the spherical convex shapes (e.g., as shown in elements 202, 206) and glass of lower index can be used for the spherical concave shapes (e.g., as shown in elements 204, 208). In some embodiments, as shown in FIG. 14, thin glass may be utilized to form the walls of the tapered portion(s) of the light pipe(s) and a liquid may be filled into the thin glassed to define a specific index of refraction for a particular application, as required. The light-focusing glass elements can be positioned near the front of the tapered portion of the light pipe (i.e., closer to the specimen) and immersed in the liquid. The liquid may be, for example, any liquid of high index of refraction …” in paragraph 74 cited by applicant as “supports this feature”), there does not appear to be any disclosure of the second portion of the light guide includes at least one transparent glass lens positioned therein to locally modify excitation numerical aperture while preserving total internal reflection of emission signals. Therefore, there does not appear to be a written description of the newly added claim limitation “wherein the second portion of the light guide includes at least one transparent glass lens positioned therein to locally modify excitation numerical aperture while preserving total internal reflection of emission signals” in the application as filed.
Claim(s) dependent on the claim(s) discussed above also fail(s) to comply with the written description requirement for the same reasons.
Claim(s) 5-8 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The specification enables leakage avoidance using different refractive indices (e.g., see “a combination of low, high, and low index glasses can be configured to avoid leakage” in paragraph 72) “With NA 0.7 inside the light pipe, common prism mirror designs can induce leakage” (see paragraph 72). However, the specification fails to enable leakage avoidance using same refractive indices (e.g., see Fig. 11C).
Claim(s) dependent on the claim(s) discussed above also fail(s) to comply with the enablement requirement for the same reasons.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 8 is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The limitation “wherein the glass of the prism mirror is of higher index than the first portion of the light guide” recited in claim 8 does not appear to further limit or include the newly added limitation “wherein the bent portion includes an indexmatched optical folding element positioned therein, wherein the optical folding element is configured to direct the emitted signal through the bent portion from the distal end of the first portion toward the proximal end of the first portion while maintaining numerical aperture without leakage” recited in claim 5.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 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.
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 of this title, 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.
Claim(s) 1, 3, 4, 9, 14, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flusberg et al. (US 8,788,021) in view of Reed et al. (US 2002/0141714).
In regard to claim 1, Flusberg et al. disclose an apparatus for large-scale dynamic imaging of a sample, comprising:
(a) an optical detector (e.g., see “… light detector 270 is shown arranged to receive light via the light conduit 220 …” in Fig. 2 and the third column 12 paragraph);
(b) a light guide having an elongated body configured to transmit light therethrough, wherein the elongated body includes (b1) a first portion including distal and proximal ends, wherein the proximal end of the first portion is optically coupled with the optical detector (e.g., see “… light detector 270 is shown arranged to receive light via the light conduit 220 …” in Fig. 2 and the third column 12 paragraph) and (b2) a second portion including distal and proximal ends, wherein the distal end of the second portion is configured to receive an emitted signal from the sample (e.g., see “… probe arrangement (e.g., a doublet GRIN lens probe) including a relay lens 214 and an objective lens 216 (e.g., implemented with one or more lenses, or a lens array, of glass, plastic or other material) … Light from the live being is passed through the objective lens 216, the relay lens 214 and the micro-prism 212 to a light conduit 220 such as a multimode fiber …” in
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and the last two complete column 9 paragraphs);
(c) a cube dichroic beam splitter positioned between the first portion and the second portion of the light guide (e.g., see “… coating on the microprism 212 separates source (excitation) and response (fluorescence) light …” in Fig. 2 and the third column 13 paragraph);
(d) a light source configured to direct a light beam through an external surface of the dichroic beam splitter, wherein the dichroic beam splitter is configured to direct the light beam toward the second open end of the light guide, wherein the dichroic beam splitter is configured to receive a return emitted signal from the second open end of the light guide and transfer the return emitted signal through the light guide to the optical detector (e.g., see “… Light received via the coated microprism 212 is passed through the relay lens 214 and the objective lens 216 to a target location of a live being. Light from the live being is passed through the objective lens 216, the relay lens 214 and the micro-prism 212 to a light conduit 220 … light conduit 222 is arranged to receive light from the light source 260 and to pass light to the micro-prism 212 … light detector 270 is shown arranged to receive light via the light conduit 220 …” in Fig. 2, the last complete column 9 paragraph, and the second and third column 12 paragraphs).
The apparatus of Flusberg et al. lacks an explicit description of details of the “… probe arrangement …” such as a rigid tapered shape with a first diameter of the second portion’s distal end smaller than a second diameter of the second portion’s proximal end. However, “… probe arrangement …” details are known to one of ordinary skill in the art (e.g., see “… optical micro-probe 18 delivers the source light to a region of the sample 12. The optical micro-probe 18 also returns to the splitter or circulator 16 a portion of the light scattered or emitted by the region of the sample 12 illuminated by the optical micro-probe 18. The optical splitter or circulator 16 redirects the returned light to detector 20 … optical micro-probe 18' includes a single-mode optical fiber 24 that transports light to and from the sample 12. The distal end 22 of the fiber 24 is fused to a GRIN fiber-size lens 26, which has the same outer diameter as the optical fiber 24 … portion of the GRIN fiber-size lens 26 adjacent the end face 28 has a conical taper (not shown). The taper also facilitates insertion of the optical micro-probe 18 into sample 12, i.e., the taper functions like a needle's point …” in paragraphs 19 and 20 of Reed et al.). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional probe configuration (e.g., comprising details such as “a conical taper”, in order to achieve additional features such as “taper functions like a needle's point” and “taper also facilitates insertion of the optical micro-probe”) for the unspecified probe configuration of Flusberg et al. and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional probe configuration (e.g., comprising details such as the second portion is rigid and defines a tapered shape, wherein a first diameter defined by the distal end of the second portion is smaller than a second diameter defined by the proximal end of the second portion) as the unspecified probe configuration of Flusberg et al.
In regard to claim 3 which is dependent on claim 1, Flusberg et al. also disclose that the first portion of the light guide is formed as a straight pipe (e.g., see Fig. 2).
In regard to claim 4 which is dependent on claim 1, Flusberg et al. also disclose that the first portion of the light guide includes a bent portion (e.g., “… connections between the device mounted on the live being and remotely located components may include, for example, flexible optical fibers for delivering the excitation light and for collecting a response such as light emitted via fluorescence …” in the third column 13 paragraph). Alternatively it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a bent portion in the first portion of Flusberg et al., in order to “remotely” locate the optical detector.
In regard to claim 9 which is dependent on claim 1, Flusberg et al. also disclose that the light beam includes a femtosecond beam operable for two-photon excitation (e.g., “… laser 120 is a Ti:sapphire laser that generates short pulses of laser light at intervals on about a picosecond or femtosecond frequency … multitude of optical analysis approaches are selectively implemented in connection with one or both of FIGS. 1 and 2, in addition to or separately from the approaches discussed above such as two-photon fluorescence imaging …” in the last complete column 8 paragraph and the last column 12 paragraph).
In regard to claim 14 which is dependent on claim 1, Flusberg et al. also disclose that the second portion of the light guide includes at least one transparent glass lens positioned therein (e.g., “… probe arrangement (e.g., a doublet GRIN lens probe) including a relay lens 214 and an objective lens 216 (e.g., implemented with one or more lenses, or a lens array, of glass, plastic or other material) … Light from the live being is passed through the objective lens 216, the relay lens 214 and the micro-prism 212 to a light conduit 220 …” in the last two complete column 9 paragraphs). The apparatus of Flusberg et al. lacks an explicit description of details of the “… probe arrangement …” such as to locally modify excitation numerical aperture while preserving total internal reflection of emission signals. However, “… probe arrangement …” details are known to one of ordinary skill in the art (e.g., see “… optical micro-probe 18 delivers the source light to a region of the sample 12. The optical micro-probe 18 also returns to the splitter or circulator 16 a portion of the light scattered or emitted by the region of the sample 12 illuminated by the optical micro-probe 18. The optical splitter or circulator 16 redirects the returned light to detector 20 … optical micro-probe 18' includes a single-mode optical fiber 24 that transports light to and from the sample 12. The distal end 22 of the fiber 24 is fused to a GRIN fiber-size lens 26, which has the same outer diameter as the optical fiber 24 … portion of the GRIN fiber-size lens 26 adjacent the end face 28 has a conical taper (not shown). The taper also facilitates insertion of the optical micro-probe 18 into sample 12, i.e., the taper functions like a needle's point …” in paragraphs 19 and 20 of Reed et al.). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional probe configuration (e.g., comprising details such as “distal end 22 of the fiber 24 is fused to a GRIN fiber-size lens 26, which has the same outer diameter as the optical fiber 24”, in order to achieve additional features such as “taper functions like a needle's point” and “taper also facilitates insertion of the optical micro-probe”) for the unspecified probe configuration of Flusberg et al. and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional probe configuration (e.g., comprising details such as to locally modify excitation numerical aperture while preserving total internal reflection of emission signals) as the unspecified probe configuration of Flusberg et al.
In regard to claim 15 which is dependent on claim 14, the apparatus of Flusberg et al. lacks an explicit description of details of the “… one or more lenses … of … other material …” such as an immersion liquid. However, “… one or more lenses … of … other material …” details are known to one of ordinary skill in the art (e.g., see “… tunable lens 280 includes one or more of a liquid lens …” in the last complete column 12 paragraph of Flusberg et al.). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional lens material (e.g., comprising details such as a “liquid lens”) for the unspecified lens material of Flusberg et al. and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional lens material (e.g., comprising details such as the second portion of the light guide is filled with an immersion liquid as the unspecified lens material of Flusberg et al.
Claim(s) 2 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flusberg et al. in view of Reed et al. as applied to claim(s) 1 above, and further in view of Fomani et al. (US 2019/0180072).
In regard to claim 2 which is dependent on claim 1, Flusberg et al. also disclose that the second portion is formed of transparent glass (e.g., “… probe arrangement (e.g., a doublet GRIN lens probe) including a relay lens 214 and an objective lens 216 (e.g., implemented with one or more lenses, or a lens array, of glass … light conduit 220 such as a multimode fiber …” in the last two complete column 9 paragraphs). The apparatus of Flusberg et al. lacks an explicit description of details of the “… fiber …” such as transparent glass. However, “… fiber …” details are known to one of ordinary skill in the art (e.g., see “… An issue with respect to the operation of optical sensors is that, under intense ambient light conditions, the intensity of light arriving at the sensor due to ambient light may be significantly higher than the intensity of the desired light signal … fiber core 372 may be made of a color filter glass (e.g., a glass fiber with colorant added), providing an ambient light filter in the core region. In some embodiments, the absorber 301 and core 372 may be made of the same base material (e.g., glass), but with different absorptive properties … ambient light filters disclosed herein can be spectral filters (or wavelength selective filters) that may be implemented as absorptive and/or interference filters …” in paragraphs 27, 57, and 61 of Fomani et al.). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional fiber (e.g., comprising details such as “fiber core 372 may be made of a color filter glass (e.g., a glass fiber with colorant added), providing an ambient light filter in the core region”, in order to achieve additional features such as minimizing “intensity of light arriving at the sensor due to ambient light”) for the unspecified fiber of Flusberg et al. and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional fiber (e.g., comprising details such as the light guide is formed of transparent glass) as the unspecified fiber of Flusberg et al.
In regard to claim 10 which is dependent on claim 1, Flusberg et al. also disclose a filter disposed between the light guide and the optical detector (e.g., see “… conventional fluorescence imaging, confocal fluorescence imaging, multi-photon fluorescence imaging, second harmonic generation (SHG), third harmonic generation (THG), Raman spectroscopy, coherent anti-stokes Raman scattering (CARS), fluorescence lifetime imaging, fluorescence resonance energy transfer (FRET), fluorescence recovery after photobleaching (FRAP), and types of polarization sensitive imaging. For these embodiments, appropriate filters and optical elements are selectively implemented in connection with or in alternative to those shown in FIGS. 1 and 2, with the optics and arrangements shown in those figures selectively modified to suit each particular application …” in the last column 12 paragraph). The apparatus of Flusberg et al. lacks an explicit description of details of the “… filters …” such as absorption-based bandpass. However, “… filters …” details are known to one of ordinary skill in the art (e.g., see “… An issue with respect to the operation of optical sensors is that, under intense ambient light conditions, the intensity of light arriving at the sensor due to ambient light may be significantly higher than the intensity of the desired light signal … fiber core 372 may be made of a color filter glass (e.g., a glass fiber with colorant added), providing an ambient light filter in the core region. In some embodiments, the absorber 301 and core 372 may be made of the same base material (e.g., glass), but with different absorptive properties … ambient light filters disclosed herein can be spectral filters ( or wavelength selective filters) that may be implemented as absorptive and/or interference filters …” in paragraphs 27, 57, and 61 of Fomani et al.). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional filter (e.g., comprising details such as “absorptive and/or interference filters”, in order to achieve additional features such as minimizing “intensity of light arriving at the sensor due to ambient light”) for the unspecified filter of Flusberg et al. and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional filter (e.g., comprising details such as an absorption-based bandpass filter) as the unspecified filter of Flusberg et al.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flusberg et al. in view of Reed et al. and Erdogan et al. as applied to claim(s) 11 above, and further in view of Manni et al. (US 2014/0071406).
In regard to claim 12 which is dependent on claim 11, Flusberg et al. also disclose that the distal end of the first portion of the light guide includes an optical facet having a geometric body shape sized to optically couple with the square geometric body of the dichroic beam splitter, and wherein the proximal end of the second portion includes an optical facet having a geometric body shape sized to optically couple with the square geometric body of the dichroic beam splitter (e.g., see “… probe arrangement (e.g., a doublet GRIN lens probe) including a relay lens 214 and an objective lens 216 (e.g., implemented with one or more lenses, or a lens array, of glass, plastic or other material) … Light from the live being is passed through the objective lens 216, the relay lens 214 and the micro-prism 212 to a light conduit 220 such as a multimode fiber …” in Fig. 2, Fig. 4A, and the last two complete column 9 paragraphs). The apparatus of Flusberg et al. lacks an explicit description of details of the “… fiber …” such as a square geometric body shape sized to optically correlate with the square geometric body of the dichroic beam splitter. However, “… fiber …” details are known to one of ordinary skill in the art (e.g., see “… Multimode fibers 140 may include conventional step-index fibers, gradient-index (GRIN) silica fibers, photonic crystal fibers, photonic bandgap fibers, specialty optical fibers that employ materials other than silica glass, and/or the like. Multimode fibers may have different core cross-sectional shapes, such as a round core cross-section, a square core cross-section, a rectangular core cross-section, octagonal core cross-section, and/or the like. Multimode optical fibers having a rectangular core with aspect ratio of 16:9 may be particularly useful for illuminating conventional imaging devices used in projectors with improved light efficiency …” in paragraph 40 of Manni et al.). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional fiber (e.g., comprising details such as “square core cross-section”, in order to achieve additional features such as “improved light efficiency”) for the unspecified fiber of Flusberg et al. and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional fiber (e.g., comprising details such as the distal end of the first portion of the light guide includes an optical facet having a square geometric body shape sized to optically correlate with the square geometric body of the dichroic beam splitter, and wherein the proximal end of the second portion includes an optical facet having a square geometric body shape sized to optically correlate with the square geometric body of the dichroic beam splitter) as the unspecified fiber of Flusberg et al.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flusberg et al. in view of Reed et al. and Erdogan et al.as applied to claim(s) 11 above, and further in view of Hua et al. (US 2015/0238071).
In regard to claim 13 which is dependent on claim 11, Flusberg et al. also disclose a liquid lens positioned on the external surface of the dichroic beam splitter, wherein the light source is configured to direct the light beam through the liquid lens (e.g., “… tunable lens 280 includes one or more of a liquid lens …” in the last complete column 12 paragraph). The apparatus of Flusberg et al. lacks an explicit description of properties of the “… liquid lens …” such as an optical stop. However, “… liquid lens …” properties are known to one of ordinary skill in the art (e.g., see “… variable-focal length element 34, such as a high-speed miniature liquid lens or other tunable lens device … EL-10-30 electrical lens [www.optotune.com] … clear aperture (2.5 mm) of the available liquid lens …” in paragraphs 34, 35, and 48 of Hua et al.). Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention that the “… liquid lens …” of Flusberg et al. has a clear aperture (and the clear aperture can also be labeled as an optical stop).
Claim(s) 16, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flusberg et al. (US 8,788,021) in view of Reed et al. (US 2002/0141714) and Manni et al. (US 2014/0071406).
In regard to claim 16, Flusberg et al. disclose a light guide, comprising:
(a) an elongated body configured to transmit light therethrough, wherein the elongated body includes: (ai) a first portion including distal and proximal ends (e.g., see “… light detector 270 is shown arranged to receive light via the light conduit 220 …” in Fig. 2 and the third column 12 paragraph), and (ii) a second portion including distal and proximal ends, wherein the distal end of the second portion is configured to receive an emitted signal from a sample (e.g., see “… probe arrangement (e.g., a doublet GRIN lens probe) including a relay lens 214 and an objective lens 216 (e.g., implemented with one or more lenses, or a lens array, of glass, plastic or other material) … Light from the live being is passed through the objective lens 216, the relay lens 214 and the micro-prism 212 to a light conduit 220 such as a multimode fiber …” in Fig. 2 and the last two complete column 9 paragraphs); and
(b) a cube dichroic beam splitter positioned between the first portion and the second portion of the light guide (e.g., see “… coating on the microprism 212 separates source (excitation) and response (fluorescence) light …” in Fig. 2 and the third column 13 paragraph),
wherein the distal end of the first portion of the light guide includes an optical facet having a geometric body shape sized to optically couple with the square geometric body of the dichroic beam splitter, and wherein the proximal end of the second portion includes an optical facet having a geometric body shape sized to optically couple with the square geometric body of the dichroic beam splitter (e.g., see “… probe arrangement (e.g., a doublet GRIN lens probe) including a relay lens 214 and an objective lens 216 (e.g., implemented with one or more lenses, or a lens array, of glass, plastic or other material) … Light from the live being is passed through the objective lens 216, the relay lens 214 and the micro-prism 212 to a light conduit 220 such as a multimode fiber …” in Fig. 2, Fig. 4A, and the last two complete column 9 paragraphs).
The guide of Flusberg et al. lacks an explicit description of details of the “… probe arrangement …” such as a rigid tapered shape with a first diameter of the second portion’s distal end smaller than a second diameter of the second portion’s proximal end and “… fiber …” details such as a square geometric body shape sized to optically correlate with the square geometric body of the dichroic beam splitter. However, “… probe arrangement …” details are known to one of ordinary skill in the art (e.g., see “… optical micro-probe 18 delivers the source light to a region of the sample 12. The optical micro-probe 18 also returns to the splitter or circulator 16 a portion of the light scattered or emitted by the region of the sample 12 illuminated by the optical micro-probe 18. The optical splitter or circulator 16 redirects the returned light to detector 20 … optical micro-probe 18' includes a single-mode optical fiber 24 that transports light to and from the sample 12. The distal end 22 of the fiber 24 is fused to a GRIN fiber-size lens 26, which has the same outer diameter as the optical fiber 24 … portion of the GRIN fiber-size lens 26 adjacent the end face 28 has a conical taper (not shown). The taper also facilitates insertion of the optical micro-probe 18 into sample 12, i.e., the taper functions like a needle's point …” in paragraphs 19 and 20 of Reed et al.) and “… fiber …” details are known to one of ordinary skill in the art (e.g., see “… Multimode fibers 140 may include conventional step-index fibers, gradient-index (GRIN) silica fibers, photonic crystal fibers, photonic bandgap fibers, specialty optical fibers that employ materials other than silica glass, and/or the like. Multimode fibers may have different core cross-sectional shapes, such as a round core cross-section, a square core cross-section, a rectangular core cross-section, octagonal core cross-section, and/or the like. Multimode optical fibers having a rectangular core with aspect ratio of 16:9 may be particularly useful for illuminating conventional imaging devices used in projectors with improved light efficiency …” in paragraph 40 of Manni et al.). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional probe configuration (e.g., comprising details such as “a conical taper”, in order to achieve additional features such as “taper also facilitates insertion of the optical micro-probe”) for the unspecified probe configuration of Flusberg et al., substituted a known conventional fiber (e.g., comprising details such as “square core cross-section”, in order to achieve additional features such as “improved light efficiency”) for the unspecified fiber of Flusberg et al., and the results of the substitutions would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional probe configuration (e.g., comprising details such as the second portion is rigid and defines a tapered shape, wherein a first diameter defined by the distal end of the second portion is smaller than a second diameter defined by the proximal end of the second portion) as the unspecified probe configuration of Flusberg et al. and to provide a known conventional fiber (e.g., comprising details such as the distal end of the first portion of the light guide includes an optical facet having a square geometric body shape sized to optically correlate with the square geometric body of the dichroic beam splitter, and wherein the proximal end of the second portion includes an optical facet having a square geometric body shape sized to optically correlate with the square geometric body of the dichroic beam splitter) as the unspecified fiber of Flusberg et al.
In regard to claim 18 which is dependent on claim 16, Flusberg et al. also disclose that the second portion of the light guide includes at least one transparent glass lens positioned therein (e.g., see “… probe arrangement (e.g., a doublet GRIN lens probe) including a relay lens 214 and an objective lens 216 (e.g., implemented with one or more lenses, or a lens array, of glass, plastic or other material) … Light from the live being is passed through the objective lens 216, the relay lens 214 and the micro-prism 212 to a light conduit 220 …” in Fig. 2 and the last two complete column 9 paragraphs).
In regard to claim 19 which is dependent on claim 16, the guide of Flusberg et al. lacks an explicit description of details of the “… one or more lenses … of … other material …” such as an immersion liquid. However, “… one or more lenses … of … other material …” details are known to one of ordinary skill in the art (e.g., see “… tunable lens 280 includes one or more of a liquid lens …” in the last complete column 12 paragraph of Flusberg et al.). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional lens material (e.g., comprising details such as a “liquid lens”) for the unspecified lens material of Flusberg et al. and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional lens material (e.g., comprising details such as the second portion of the light guide is filled with an immersion liquid as the unspecified lens material of Flusberg et al.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flusberg et al. in view of Reed et al. and Manni et al. as applied to claim(s) 16 above, and further in view of Hua et al. (US 2015/0238071).
In regard to claim 17 which is dependent on claim 16, Flusberg et al. also disclose a liquid lens positioned on an external surface of the dichroic beam splitter (e.g., see “… tunable lens 280 includes one or more of a liquid lens …” in the last complete column 12 paragraph of Flusberg et al.). The guide of Flusberg et al. lacks an explicit description of properties of the “… liquid lens …” such as an optical stop. However, “… liquid lens …” properties are known to one of ordinary skill in the art (e.g., see “… variable-focal length element 34, such as a high-speed miniature liquid lens or other tunable lens device … EL-10-30 electrical lens [www.optotune.com] … clear aperture (2.5 mm) of the available liquid lens …” in paragraphs 34, 35, and 48 of Hua et al.). Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention that the “… liquid lens …” of Flusberg et al. has a clear aperture (and the clear aperture can also be labeled as an optical stop).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flusberg et al. (US 8,788,021) in view of Reed et al. (US 2002/0141714), Manni et al. (US 2014/0071406), and Fomani et al. (US 2019/0180072).
In regard to claim 20, Flusberg et al. disclose an apparatus for large-scale dynamic imaging of a sample, comprising:
(a) an optical detector (e.g., see “… light detector 270 is shown arranged to receive light via the light conduit 220 …” in Fig. 2 and the third column 12 paragraph);
(b) a light guide and having an elongated body configured to transmit light therethrough, wherein the elongated body includes: (bi) a first portion including distal and proximal ends, wherein the proximal end of the first portion is optically coupled with the optical detector (e.g., see “… light detector 270 is shown arranged to receive light via the light conduit 220 …” in Fig. 2 and the third column 12 paragraph), and (bii) a second portion formed of a transparent glass and including distal and proximal ends, wherein the distal end of the second portion is configured to receive an emitted signal from the sample (e.g., see “… probe arrangement (e.g., a doublet GRIN lens probe) including a relay lens 214 and an objective lens 216 (e.g., implemented with one or more lenses, or a lens array, of glass, plastic or other material) … Light from the live being is passed through the objective lens 216, the relay lens 214 and the micro-prism 212 to a light conduit 220 such as a multimode fiber …” in Fig. 2 and the last two complete column 9 paragraphs);
(c) a cube dichroic beam splitter positioned between the first portion and the second portion of the light guide, the cube dichroic beam splitter having square facets (e.g., see “… coating on the microprism 212 separates source (excitation) and response (fluorescence) light …” in Fig. 2 and the third column 13 paragraph); and
(d) a filter disposed directly between the light guide and the optical detector (e.g., see “… conventional fluorescence imaging, confocal fluorescence imaging, multi-photon fluorescence imaging, second harmonic generation (SHG), third harmonic generation (THG), Raman spectroscopy, coherent anti-stokes Raman scattering (CARS), fluorescence lifetime imaging, fluorescence resonance energy transfer (FRET), fluorescence recovery after photobleaching (FRAP), and types of polarization sensitive imaging. For these embodiments, appropriate filters and optical elements are selectively implemented in connection with or in alternative to those shown in FIGS. 1 and 2, with the optics and arrangements shown in those figures selectively modified to suit each particular application …” in the last column 12 paragraph).
The apparatus of Flusberg et al. lacks an explicit description of details of the “… probe arrangement …” such as a tapered shape with a first diameter of the second portion’s distal end smaller than a second diameter of the second portion’s proximal end, “… fiber …” details such as the light guide is formed of transparent glass and having square facets matched to the cube dichroic beam splitter, and details of the “… filters …” such as absorption-based bandpass. However, “… probe arrangement …” details are known to one of ordinary skill in the art (e.g., see “… optical micro-probe 18 delivers the source light to a region of the sample 12. The optical micro-probe 18 also returns to the splitter or circulator 16 a portion of the light scattered or emitted by the region of the sample 12 illuminated by the optical micro-probe 18. The optical splitter or circulator 16 redirects the returned light to detector 20 … optical micro-probe 18' includes a single-mode optical fiber 24 that transports light to and from the sample 12. The distal end 22 of the fiber 24 is fused to a GRIN fiber-size lens 26, which has the same outer diameter as the optical fiber 24 … portion of the GRIN fiber-size lens 26 adjacent the end face 28 has a conical taper (not shown). The taper also facilitates insertion of the optical micro-probe 18 into sample 12, i.e., the taper functions like a needle's point …” in paragraphs 19 and 20 of Reed et al.) and “… filters …” details are known to one of ordinary skill in the art (e.g., see “… An issue with respect to the operation of optical sensors is that, under intense ambient light conditions, the intensity of light arriving at the sensor due to ambient light may be significantly higher than the intensity of the desired light signal … fiber core 372 may be made of a color filter glass (e.g., a glass fiber with colorant added), providing an ambient light filter in the core region. In some embodiments, the absorber 301 and core 372 may be made of the same base material (e.g., glass), but with different absorptive properties … ambient light filters disclosed herein can be spectral filters (or wavelength selective filters) that may be implemented as absorptive and/or interference filters …” in paragraphs 27, 57, and 61 of Fomani et al. and “… Multimode fibers 140 may include conventional step-index fibers, gradient-index (GRIN) silica fibers, photonic crystal fibers, photonic bandgap fibers, specialty optical fibers that employ materials other than silica glass, and/or the like. Multimode fibers may have different core cross-sectional shapes, such as a round core cross-section, a square core cross-section, a rectangular core cross-section, octagonal core cross-section, and/or the like. Multimode optical fibers having a rectangular core with aspect ratio of 16:9 may be particularly useful for illuminating conventional imaging devices used in projectors with improved light efficiency …” in paragraph 40 of Manni et al.). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional probe configuration (e.g., comprising details such as “a conical taper”, in order to achieve additional features such as “taper also facilitates insertion of the optical micro-probe”) for the unspecified probe configuration of Flusberg et al., substituted a known conventional fiber (e.g., comprising details such as “fiber core 372 may be made of a color filter glass (e.g., a glass fiber with colorant added), providing an ambient light filter in the core region”, in order to achieve additional features such as minimizing “intensity of light arriving at the sensor due to ambient light” and “square core cross-section”, in order to achieve additional features such as “improved light efficiency”) for the unspecified fiber of Flusberg et al., substituted a known conventional filter (e.g., comprising details such as “absorptive and/or interference filters”, in order to achieve additional features such as minimizing “intensity of light arriving at the sensor due to ambient light”) for the unspecified filter of Flusberg et al., and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional probe configuration (e.g., comprising details such as the second portion is rigid and defines a tapered shape, wherein a first diameter defined by the distal end of the second portion is smaller than a second diameter defined by the proximal end of the second portion, the light guide matched to the square facets and is a rigid tapered transparent glass light guide, and an absorption-based bandpass filter disposed directly between the light guide and the optical detector) as the unspecified probe configuration of Flusberg et al.
Response to Arguments
Applicant’s arguments with respect to the amended claims have been fully considered but some are moot in view of the new ground(s) of rejection. Applicant's remaining arguments filed 10 November 2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, there is some teaching, suggestion, or motivation to do so found in the references themselves. Further, “… probe arrangement …” details are known to one of ordinary skill in the art (e.g., see “… optical micro-probe 18 delivers the source light to a region of the sample 12. The optical micro-probe 18 also returns to the splitter or circulator 16 a portion of the light scattered or emitted by the region of the sample 12 illuminated by the optical micro-probe 18. The optical splitter or circulator 16 redirects the returned light to detector 20 … optical micro-probe 18' includes a single-mode optical fiber 24 that transports light to and from the sample 12. The distal end 22 of the fiber 24 is fused to a GRIN fiber-size lens 26, which has the same outer diameter as the optical fiber 24 … portion of the GRIN fiber-size lens 26 adjacent the end face 28 has a conical taper (not shown). The taper also facilitates insertion of the optical micro-probe 18 into sample 12, i.e., the taper functions like a needle's point …” in paragraphs 19 and 20 of Reed et al.). One of ordinary skill in the art could have substituted a known conventional probe configuration (e.g., comprising details such as “a conical taper”, in order to achieve additional features such as “taper functions like a needle's point” and “taper also facilitates insertion of the optical micro-probe”) for the unspecified probe configuration of Flusberg et al. and the results of the substitution would have been predictable. Thus it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional probe configuration (e.g., comprising details such as the second portion is rigid and defines a tapered shape, wherein a first diameter defined by the distal end of the second portion is smaller than a second diameter defined by the proximal end of the second portion) as the unspecified probe configuration of Flusberg et al. Therefore the combination of the cited prior art teaches or suggests all limitations as arranged in the claims.
In response to applicant's argument of alleged advantages of “operates by total internal reflection to preserve etendue while expanding the signal collection cross-section” and “compactness and high-efficiency signal collection”, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2007/0002435 teaches a microscope.
US 2020/0138296 teaches a spectroscope.
US 2021/0199587 teaches a sensor.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shun Lee whose telephone number is (571)272-2439. The examiner can normally be reached Monday-Friday.
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/SL/
Examiner, Art Unit 2884
/UZMA ALAM/Supervisory Patent Examiner, Art Unit 2884