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 .
Status Of Claims
This Office Action is in response to an amendment received 1/14/2026 in which Applicant lists claims 11-31 as being cancelled, claims 1-10 as being withdrawn, claim 33 as being previously presented, claims 32, 34 as being currently amended, and claims 35-38 as being new. It is interpreted by the examiner that claims 1-10, 32-38 are pending.
If applicant is aware of any relevant prior art, or other co-pending application not already of record, they are reminded of their duty under 37 CFR 1.56 to disclose the same.
Election/Restrictions
Applicant’s election without traverse of Group III in the reply filed on 12/2/2025 is acknowledged.
Claims 1-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Group I, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/2/2025.
It is noted that claims 27-31, drawn to nonelected Group II, have not been withdrawn since they were cancelled by applicant in the reply filed on 12/2/2025.
Information Disclosure Statement
The information disclosure statement filed 10/30/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. It is noted that the 10/30/2023 IDS includes an English machine translation of CN 101650445, but does not include an actual legible copy of the cited foreign patent document.
The Information Disclosure Statement(s) (IDS) filed on 3/5/2025 and 4/28/2025 were considered.
Priority
PCT/US2022/019924, filed on 3/11/2022 is the earliest filed application that discloses all of the limitations in claims 33 and 34, wherein the solid mass is flat within 250 nm and wherein the polymer comprises BIO-133, and therefore is the earliest priority date given to claims 33 and 34.
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 Rejections - 35 USC § 112
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.
Claim 37 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The limitation “the clear solid mass has an index of refraction that matches water’s index of refraction” in claim 37 renders the claim indefinite since the index of refraction of water is not defined by the claim, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Further, if one of ordinary skill in the optical arts interprets the index of refraction of water to be 1.33, then it is not clear how claim 37 is to be interpreted to have a different intended scope from claim 36. Therefore, the metes-and-bounds of claim 37 is not clear.
Other Related Art
This prior art, made of record, but not relied upon is considered pertinent to applicant's disclosure since the following references have similar structure and/or use similar optical elements to what is claimed and/or disclosed in the instant application:
Vasdekis et al., US 2021/0285883 A1, discloses microscopic imaging using a polymer index matched to water (e.g. BIO-133) and having low side-wall surface roughness (paras. [0023], [0025], [0067]-[0069], [0085]);
Hedde et al., US 2019/0353884 A1, discloses microscopic imaging using a UV cured polymer index matched to water (e.g. MY-133; paras. [0021]-[0022], [0063]-[0066], [0110]-[0112], Fig. 10); and
Hillman et al., US 2024/0085681 A1, claims a very similar optical component (see at least claims 1, 6).
Claim Rejections - 35 USC § 102/103
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 (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.
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 32, 34-38 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Kues et al., U.S. Patent Application Publication Number 2015/0241682 A1 (hereafter Kues), or in the alternative, under 35 U.S.C. 103 as obvious over Kues in view of Han et al., "A polymer index-matched to water enables diverse applications in fluorescence microscopy", Lab on a Chip, pages 1549-1562, Published 2/22/2021, DOI: 10.1039/d0lc01233e (hereafter Han).
Regarding claim 32, Kues discloses an optical component comprising: an objective lens for a microscope (see at least element 3, the abstract, and para. [0090]), wherein the objective lens has a front element (see at least a portion of objective element 3 which is closes to object element 2 and considered to be “a front element” of the objective lens); and
a quantity of a polymer that has been cured into a clear solid mass (see at least elements EL1/E1, paras. [0054]-[0062], [0089]-[0097]; figures 1, 3, 4, 6, 13, 15, 16, 18, 19, 21, 22c), wherein the solid mass has (a) a lower surface that adheres directly to the front element of the objective lens (see at least elements EL1/E1, paras.[0089], [0097]; figure 22c, “attachment”, “attaching”) and (b) a flat upper surface (see at least elements EL1/E1; figures 1, 3, 4, 6, 13, 15, 16, 18, 19, 21, 22c),
wherein the lower surface of the solid mass adheres directly to the front element of the objective lens without relying on a separate adhesive layer positioned between the lower surface of the solid mass and the front element of the objective lens (see at least elements EL1/E1, paras. [0089], [0097]; figure 22c, “attachment”, “attaching”, wherein no separate adhesive layer is disclosed).
It is interpreted that the polymer(s) disclosed by Kues, e.g. polydimethylsiloxane (PDMS), inherently are cured.
However, in the alternative, if it is interpreted that Kues does not disclose that the polymer has been cured into a clear solid mass, Han teaches a microcopy apparatus using BIO-133, a biocompatible, UV-curable, commercially available polymer with a refractive index matched to water, which is capable of having cells grown directly on its surface, can perform extended time-lapse volumetric imaging, enables specimen immobilization, reduces optical aberrations, is non-fluorescent and non-toxic, and wherein the polymer is UV cured (see at least BIO-133, the abstract, and pages 1549-1551, 1555-1556 of Han).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the elastomeric polymer material of Kues to include the teachings of Han so that the polymer is a UV cured polymer, such as BIO-133, since it has been held to be within the ordinary skill of workers in the art to select a known material on the basis of its suitability for the intended use. One would have been motivated to choose a UV cured polymer, such as BIO-133, for the purpose of using a non-fluorescent and non-toxic commercially available polymer with a refractive index matched to water, for use with water immersion objective lenses, and which is capable of performing extended time-lapse volumetric imaging and/or reducing optical aberrations. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding claim 34, Kues further discloses that the polymer may include one elastomer immersion media or two or more elastomer immersion media (see at least elements E1, E2 and E3 of Kues, paras. [0091], [0095]-[0096]).
Kues does not specifically disclose that the polymer comprises BIO-133.
However, Han teaches a microcopy apparatus using BIO-133, a biocompatible, UV-curable, commercially available polymer with a refractive index matched to water, which is capable of having cells grown directly on its surface, can perform extended time-lapse volumetric imaging, enables specimen immobilization, reduces optical aberrations, is non-fluorescent and non-toxic, and wherein the polymer is UV cured (see at least BIO-133, the abstract, and pages 1549-1551, 1555-1556 of Han).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the elastomeric polymer material of Kues to include the teachings of Han so that the polymer comprises BIO-133, for the purpose of using a non-fluorescent and non-toxic commercially available polymer with a refractive index matched to water, for use with water immersion objective lenses, and which is capable of performing extended time-lapse volumetric imaging and/or reducing optical aberrations. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding claim 35, Kues does not specifically disclose that the polymer is a UV-curable polymer that has been cured into the clear solid mass by exposure to UV light.
However, Han teaches a microcopy apparatus using BIO-133, a biocompatible, UV-curable, commercially available polymer with a refractive index matched to water, which is capable of having cells grown directly on its surface, can perform extended time-lapse volumetric imaging, enables specimen immobilization, reduces optical aberrations, is non-fluorescent and non-toxic, and wherein the polymer is UV cured (see at least BIO-133, the abstract, and pages 1549-1551, 1555-1556 of Han).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the elastomeric polymer material of Kues to include the teachings of Han so that the polymer is a UV cured polymer, such as BIO-133, since it has been held to be within the ordinary skill of workers in the art to select a known material on the basis of its suitability for the intended use. One would have been motivated to choose a UV cured polymer, such as BIO-133, for the purpose of using a non-fluorescent and non-toxic commercially available polymer with a refractive index matched to water, for use with water immersion objective lenses, and which is capable of performing extended time-lapse volumetric imaging and/or reducing optical aberrations. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding claims 36-38, Kues does not specifically disclose that the objective lens is a water immersion objective lens, and wherein the clear solid mass has an index of refraction of 1.33 (i.e. wherein the clear solid mass has an index of refraction that matches a liquid into which the front element of the objective lens is immersed).
However, Han teaches a microcopy apparatus using BIO-133, a biocompatible, UV-curable, commercially available polymer with a refractive index matched to water, which is capable of having cells grown directly on its surface, can perform extended time-lapse volumetric imaging, enables specimen immobilization, reduces optical aberrations, is non-fluorescent and non-toxic, and wherein the polymer is used with a water immersion objective lens (see at least BIO-133, the abstract, and pages 1549-1551 of Han, figures 1a, 2b).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the apparatus of Kues to include the teachings of Han so that the objective lens is a water immersion objective lens, and wherein the clear solid mass has an index of refraction of 1.33, for the purpose of using a well-known type of immersion objective and allowing refractive index matching to reduce optical aberrations during imaging.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Kues et al., U.S. Patent Application Publication Number 2015/0241682 A1 (hereafter Kues) in view of Han et al., "A polymer index-matched to water enables diverse applications in fluorescence microscopy", Lab on a Chip, pages 1549-1562, Published 2/22/2021, DOI: 10.1039/d0lc01233e (hereafter Han) as applied to claim 32 above, and further in view of Tsai et al., EP 3054337 A1 (hereafter Tsai).
Regarding claim 33, Han further teaches that BIO-133 may be bonded to PDMS and reversibly bonded to glass (see at least pages 1554-1555 of Hans).
Kues in view of Hans does not specifically disclose that the upper surface of the solid mass is flat within 250 nm.
However, Tsai teaches an imaging apparatus including a microscope module, wherein an objective is used with immersion media disposed between two ultra-flat glass plates (see at least figures 2 and 3, paras. [0020], [0024] of Tsai, λ/10 flatness).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the apparatus of Kues in view of Han to include the teachings of Tsai so that the upper surface of the solid mass is flat within 250 nm, for the purpose of providing a smooth interface between different media while also controlling the adhesion strength between the polymer and a glass and/or PDMS surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEREK S. CHAPEL whose telephone number is (571)272-8042. The examiner can normally be reached M-F 9:30am-6pm.
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/Derek S. Chapel/Primary Examiner, Art Unit 2872 1/14/2026
Derek S. CHAPEL
Primary Examiner
Art Unit 2872