DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Pre-amendment
2. The present office action is made in response to the Pre-amendment filed on 06/02/2023. It is noted that in the Pre-amendment, applicant has made changes to the specification and the claims. There is not any change to be made to the abstract and the drawings.
2A) Regarding to the specification, applicant has added a new paragraph regarding “Cross Reference to Related Applications” into page 1 of the specification; and
2B) Regarding to the claims, applicant has amended claims 1-12. There is not any claim being added/canceled into/from the application.
Election/Restrictions
3. In response to the Election/Restriction mailed to applicant on 10/10/2025, applicant has made an election of Invention I in the reply filed on 12/10/2025. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
4. As a result of applicant’s election, claims 1-5 and 10-12 are examined in the present office action, and claims 6-9 have been withdrawn from further consideration as being directed to a non-elected Invention. Applicant should note that the non-elected claims 6-9 will be rejoined if the linking claim 1 is later found as an allowable claim.
5. It is noted that the list of claims as filed in the Election on 10/10/2025 fails to comply with the requirement(s) of Rule 37 CFR 1.121 because applicant has not used proper status identifier for each elected claims 1-5 and 10-12 in the list. Applicant should note that claims 1-12 were amended in the Pre-amendment of 06/02/2023, thus the status identifier of each elected claims 1-5 and 10-12 is --(Previously presented)-- , not “(Original)”.
In the spirit of co-operation, the claims as provided in the list of claims filed on 12/10/2025 have been used in examination of the application at this time; however, applicant has to correct the status identifier of elected claims 1-5 and 10-12 in response to the present office action.
Priority
6. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
7. The drawings contain nine sheets of figures 1, 2A-2B, 3A-3B and 4-9 were received on 06/02/2023. These drawings are objected by the examiner for the following reason(s).
8. The drawings are objected to because the use of references (20a, 20a, 20c, 20d) to show the sensors in figure 5 is not correct, see paragraphs [0094]-[0097]. The examiner is of opinion that the reference “20a” appeared on top left side of the figure should be changed to –20b--. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
9. The abstract of the disclosure is objected to because a) it contains phrase(s) which can be implied, such as “The disclosure relates”, see lines 1 and 6 of the abstract; and b) it contains term “means”, see line 3 of the abstract. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
10. Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
11. 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.
12. The specification is objected to because it does not have headlines for the purpose of providing a clear framework of the specification. Appropriate correction is required.
13. The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
14. The disclosure is objected to because of the following informalities: a) Paragraph [0003], on line 3 of the paragraph: what does applicant mean by “O2, CO2 environment/content”? b) Paragraph [0012], on line 3 of the paragraph and Paragraph [0078], on line 5 of the paragraph: what does applicant mean by “ם m”? c) Paragraph [0062], on line 12 of the paragraph: “aschematic” should be changed to --a schematic--;. There are still some grammatic and idiomatic errors in the specification. Applicant should carefully proofread the specification. Appropriate correction is required.
Claim Objections
15. Claim 10 is objected to for the typo appeared in the phrase thereof “where in the first device … second device” (lines 1-2). Should the terms thereof “where in” (lines 1-2) be changed to --wherein--? Appropriate correction is required.
Claim Interpretation
16. 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.
17. 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.
18. 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 sensor readout device” and “an intensity pattern” as recited in each of claims 1 and 11; and
b) “a first device” and “a second device” as recited in claim 10.
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
19. 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.
20. Claims 1-5 and 10-12 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 by the features thereof “the sensor head … an intensity pattern” (lines 3-8).
The mentioned features make the claim indefinite because it is unclear about the relationship(s) between “a sample space” (line 5) and “a sample chamber” (line 6). Is “a sample chamber” the space where a sample supported by a substrate is located? If it is then “a sample chamber” (line 6) should be changed to --the sample space--. If it is not then it is completely unclear how the so-called “a sample chamber” is formed and is located inside the device having a sample space for receiving a substrate having a sample.
For the purpose of examination, the sample chamber recited in the claim on line 6 is understood as a chamber defined by the sample space recited in the claim on line 5.
b) Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite due to the use of terms “in particular” in the feature thereof “one or more filters … vapored-deposited” (lines 1-3).
Applicant should note that the terms "in particular" render the claim indefinite because it is unclear whether the limitations following the terms are part of the claimed invention. See MPEP § 2173.05(d).
c) Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted element(s) is/are the component(s) used to connect the first and second devices so that “the first device cannot be displaced relative to or fall off of the second device” as recited in the claim on line 3.
d) Claim 11 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 elements a) and b) above.
e) The remaining claims are dependent upon the rejected base claims and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 102
21. 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.
22. 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.
23. Claims 1-4 and 11-12, as best as understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ozcan et al (US Publication No. 2012/0148141, submitted by applicant).
Ozcan et al discloses a compact and light-weight lens-free device for conducting automated semen analysis.
a) Regarding present claims 1 and 11-12, the device as described in paragraphs [0006]-[0007] and [0034]-[0042] and shown in fig. 1 comprises the following features:
a1) a partially coherent light source (30);
a2) an image sensor (14) including a sensor head (36) and a sensor readout device (14);
a3) the sensor head (36) and the light source (30) are arranged in a manner which defines a sample space/chamber therebetween for receiving a substrate (28) having a sample (100); and
a4) the sample (100) located in the sample space/chamber is illuminated by light from the partially coherent light source (30) and its image with an intensity pattern is received by the sensor head (36) of the image sensor (14).
b) Regarding present claim 2, the imaging process of the sample is a lensless (or lens-free) imaging because there is not any lens or optical component affecting optical coherent of light emitted from the light source (30) or light guidance being used/located between the light source (30) and the sensor head (36) in the device provided by Ozcan et al, see paragraphs [0036]-[0041] and fig. 1.
c) Regarding present claim 3, the partially coherent light source (30) used in the device has a bandwidth around 5 nm, see paragraphs [0006]-[0007], thus the light source (3) has a coherent length around 25 µm.
d) Regarding present claim 4, the sensor readout device (14) is spaced apart from the sensor head (36) such that the sample space is substantially not heated in an operation of the sensor readout device, see paragraph [0034] and fig. 1.
e) Regarding present claims 10-11, the substrate (28) supporting the sample (100) is moved by a sample tray (26) with respect to the light source (30) and the sensor head (36). As a result, a selected sample from a plurality of different samples is able to place on the substrate (28) which selected sample is illuminated by the light source and its image is collected by the sensor head when that selected sample is located in the light path defined by light emitted from the light source, see paragraph [0036] and fig. 1.
Claim Rejections - 35 USC § 103
24. 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.
25. Claim 5, as best as understood, is rejected under 35 U.S.C. 103 as being unpatentable over Ozcan et al in view of Hu et al (US Publication No. 2017/0299434).
The device having a partially coherent light source, an image sensor including a sensor head and a sensor readout device, and a sample space/chamber located between the light source and sensor head for supporting a substrate having a sample for providing lensless imaging of the sample as provided by Ozcan et al does not positively disclose at least one filter applied to the sensor head as recited in the claim.
However, a sensor system having a sensor and at least one filter directly disposed/formed on a(n) (entrance/front) surface of a sensor is known to one skill in the art as can be seen in the device provided by Hu et al. In particular, in the device described in paragraph [0075] and shown in figs. 4, Hu et al discloses a device having a sensor and a filter wherein the filter is directly disposed on an entrance surface of the filter, see also fig. 4B. Regarding the feature that the filter is directly vapor-deposited on the sensor head as claimed, it is noted that a method step of forming a device is not germane to the issue of patentability of the device itself, therefore, the method step has not given a patentable weight. In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to modify the device provided by Ozcan et al by using a filter directly deposited on an entrance surface of a sensor as suggested by Hu et al for the purpose of protecting the sensor and/or for adjusting the light pattern to be received by the sensor to meet a particular application.
26. Claim 10, as best as understood, is rejected under 35 U.S.C. 103 as being unpatentable over Ozcan et al in view of Kim et al (US Publication No. 2019/0049712, submitted by applicant).
The device having a partially coherent light source, an image sensor including a sensor head and a sensor readout device, and a sample space/chamber located between the light source and sensor head for supporting a substrate having a sample for providing lensless imaging of the sample as provided by Ozcan et al does not positively disclose that there are two device similar to each other wherein the first device is adapted to be placed on top of the second device such that they cannot be displaced relative to or fall off from each other.
However, an apparatus having more than two devices similar to each other and arranged in a manner in which a first device is adapted to be placed on top of the second device such that they cannot be displaced relative to or fall off from each other is known to one skill in the art as can be seen in the apparatus provided by Kim et al. In particular, in paragraph [0059] and shown in fig. 1, Kim et al discloses an apparatus (10) comprises a plurality of optical devices (100) similar to each other wherein the devices are placed on top of each other. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to modify the device provided by Ozcan et al by using a plurality of similar devices wherein a first device is arranged on top of a second device as suggested by Kim et al for the purpose of viewing a plurality of samples wherein the devices cannot be displaced relative to or fall off from each other for safety and saving space.
Conclusion
27. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
28. The US Patent Nos. 9,007,433 and 11,609,172 are cited as of interest in that each discloses an optical device having a partially coherent light source, an image sensor including a sensor head and a sensor readout device, and a sample space/chamber located between the light source and sensor head for supporting a substrate having a sample for providing lensless imaging of the sample.
29. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571)272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872