DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is in response to the amendment filed 1/6/2026.
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.
Claims 1 - 20 are 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 pre-AIA the applicant regards as the invention.
Regarding claim 1, cited term of “…upstream of the tunable lens in an optical path….” (line 4) is vague and renders the claims indefinite. As no light sources is specified in the claim, light beam going direction is unknown; so cited term of “upstream… in an optical path” becomes unclear, which lacks proper antecedent basis.
Claims 2-14 are rejected as containing the deficiencies of claim 1 through their dependency from claim 1.
Claim 15 has the same undefined issue as that of claim 1 in line 5.
Claims 16-20 are rejected as containing the deficiencies of claim 15 through their dependency from claim 15.
Therefore proper amendments are required in order to clarify the scopes of the claims and overcome the rejections.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-6, 9-16 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Millett-Sikking et al (US 20220260818).
Regarding Claim 1, Millett-Sikking teaches a tunable optical assembly (abstract; figs. 2A) comprising:
a tunable lens (fig. 2A, 232-Obj3; ¶[0067], line 1-32, This allows the third objective 232 to collect essentially all the light from the second objective 230, while also allowing a significant range of adjustment for the tilt angle, α, for example up to 45° for a glass frustum, to achieve the highest overall emission path numerical aperture; ¶[0069], line 1-25, …allows at least the third objective 232, the third lens 234, and the detector 226 to rotate as a rigid object about an inter section of the second intermediate image plane, IP2, and the third intermediate image plane, IP3, such that the tilt angle, α , can be dynamically adjusted and optimized for different samples 206; ¶[0083], line 1-5, the third objective in the emission path was a Nikon 40x 0.95 NA air objective in a standard remote refocus arrangement); and
an intermediate focal plane defining (IFPD) objective (fig. 2A, 230-Obj2, IP2; ¶[0021], line 1-26, a microscopy system for high numerical aperture, low aberration imaging of a tilted image plane comprises a first objective arranged to collect emitted light from a sample; a second objective … configured to collect substantially all the emitted light from the first objective; a combination of the first and second objectives being configured to produce an intermediate image of the sample, and a third objective focused on the intermediate image, the third objective having an optical axis that is tilted relative to an optical axis of the second objective by a tilt angle such that the third objective images the tilted plane in the intermediate image),
the IFPD objective (fig. 2A, 230-Obj2) disposed immediately upstream of the tunable lens in an optical path of the tunable optical assembly (fig. 2A, 232-Obj3) and
configured to define an intermediate focal plane disposed between the IFPD objective and the tunable lens (fig. 2A, IP2 – between 230-Obj2 and 232-Obj3).
Regarding Claim 3, Millett-Sikking teaches the tunable optical assembly of claim 1, further comprising: a first tube lens (fig. 2A, 212-TL1); and a second tube lens (fig. 2A, 228-TL2),
the first tube lens being upstream of the second tube lens in the tunable optical assembly (fig. 2A, 212-TL1, 228-TL2) and the second tube lens (fig. 2A, 228-TL2) being upstream of the IFPD objective (fig. 2A, , 230-Obj2) in the tunable optical assembly.
Regarding Claim 4, Millett-Sikking teaches the tunable optical assembly of claim 3, wherein the first tube lens forms an intermediate image between the first tube lens and the second tube lens (fig. 2A, M1/IP1-- intermediate image, 212-TL1, 228-TL2).
Regarding Claim 5, Millett-Sikking teaches the tunable optical assembly of claim 4, wherein changing of the focal length of the tunable lens causes the intermediate image to shift positions between the first tube lens and the second tube lens (¶[0041], line 1-30, the first and second lenses 212, 228 are in a relayed configuration, with the microscope module 202 forming a first intermediate image plane (IP1) between the first and second lenses 212, 228); and
the first tube lens and the second tube lens are configured such that the intermediate image is not formed within either of the first tube lens or the second tube lens (fig2A, M1/IP1-- at middle of TL1 and Tl2; see above, --forming a first intermediate image plane (IP1) between the first and second lenses 212, 228).
Regarding Claim 6, Millett-Sikking teaches the tunable optical assembly of claim 3, wherein at least one of the first tube lens or second tube lens defines a pupil between the second tube lens and the IFPD objective (fig. 2A, TL1/TL2, IP1 (--pupil position of 202), Obj2- objective).
Regarding Claim 9, Millett-Sikking teaches the tunable optical assembly of claim 1, wherein a magnification of the IFPD objective is configured to reduce an aberration introduced by changing a focal length of the tunable lens (fig. 2A, , 210-Obj1, 212-TL1, 2288TL2, 230-Obj2; ¶[0021], line 1-26, a microscopy system for high numerical aperture, low aberration imaging of a tilted image plane comprises a first objective arranged to collect emitted light from a sample; a second objective … configured to collect substantially all the emitted light from the first objective; a combination of the first and second objectives being configured to produce an intermediate image of the sample, and a third objective focused on the intermediate image, the third objective having an optical axis that is tilted relative to an optical axis of the second objective by a tilt angle such that the third objective images the tilted plane in the intermediate image).
Regarding Claim 10, Millett-Sikking teaches the tunable optical assembly of claim 1, wherein an image formed at the intermediate focal plane contains a prescribed magnitude of coma, configured to reduce spherical aberration introduced by changing a focal length of the tunable lens (see above; --further, this portion refers to property/function of claimed tunable optical assembly, which is of a function/property claim. In product and apparatus claims –when the structure and composition recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent, see MPEP § 2112.01. As the structure and materials provided by Millett-Sikking is same to that recited in the claims, then it is expected that optical functions/properties provided by Millett-Sikking have same results as claimed. Since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Regarding Claim 11, Millett-Sikking teaches the tunable optical assembly of claim 1, wherein an image formed at the intermediate focal plane contains a prescribed magnitude of chromatic aberration, configured to reduce additional chromatic aberration introduced by changing a focal length of the tunable lens (see above; --further, this portion refers to property/function of claimed tunable optical assembly, which is of a function/property claim. In product and apparatus claims –when the structure and composition recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent, see MPEP § 2112.01. As the structure and materials provided by Millett-Sikking is same to that recited in the claims, then it is expected that optical functions/properties provided by Millett-Sikking have same results as claimed. Since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Regarding Claim 12, Millett-Sikking teaches the tunable optical assembly of claim 1, further comprising: a relay lens disposed downstream of the tunable lens (fig. 2A, 234-TL3).
Regarding Claim 13, Millett-Sikking teaches the tunable optical assembly of claim 12, wherein the relay lens is configured to correct tuning-independent aberrations of the tunable optical assembly (see above; --further, this portion refers to property/function of claimed tunable optical assembly, which is of a function/property claim. In product and apparatus claims –when the structure and composition recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent, see MPEP § 2112.01. As the structure and materials provided by Millett-Sikking is same to that recited in the claims, then it is expected that optical functions/properties provided by Millett-Sikking have same results as claimed. Since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Regarding Claim 14, Millett-Sikking teaches the tunable optical assembly of claim 12, further comprising at least one of an optical sensor or an eye piece disposed at an imaging plane defined by the relay lens (fig. 2A, IP4, 226-- detector).
Regarding Claim 15, Millett-Sikking teaches an optical system (abstract; figs. 2A) comprising:
a tunable optical assembly (fig. 2A) comprising:
a tunable lens (fig. 2A, 232-Obj3; ¶[0067], line 1-32, This allows the third objective 232 to collect essentially all the light from the second objective 230, while also allowing a significant range of adjustment for the tilt angle, α, for example up to 45° for a glass frustum, to achieve the highest overall emission path numerical aperture; ¶[0069], line 1-25, …allows at least the third objective 232, the third lens 234, and the detector 226 to rotate as a rigid object about an inter section of the second intermediate image plane, IP2, and the third intermediate image plane, IP3, such that the tilt angle, α , can be dynamically adjusted and optimized for different samples 206; ¶[0083], line 1-5, the third objective in the emission path was a Nikon 40x 0.95 NA air objective in a standard remote refocus arrangement); and
an intermediate focal plane defining (IFPD) objective (fig. 2A, 230-Obj2, IP2; ¶[0021], line 1-26, a microscopy system for high numerical aperture, low aberration imaging of a tilted image plane comprises a first objective arranged to collect emitted light from a sample; a second objective … configured to collect substantially all the emitted light from the first objective; a combination of the first and second objectives being configured to produce an intermediate image of the sample, and a third objective focused on the intermediate image, the third objective having an optical axis that is tilted relative to an optical axis of the second objective by a tilt angle such that the third objective images the tilted plane in the intermediate image),
the IFPD objective (fig. 2A, 230-Obj2) disposed immediately upstream of the tunable lens in an optical path of the tunable optical assembly (fig. 2A, 232-Obj3) and
configured to define an intermediate focal plane disposed between the IFPD objective and the tunable lens (fig. 2A, IP2 – between 230-Obj2 and 232-Obj3).
Regarding Claim 16, Millett-Sikking teaches the optical system of claim 15, further comprising a tunable lens driver configured to control the focal length of the tunable lens (¶[0083], line 1-5, the third objective in the emission path was a Nikon 40x 0.95 NA air objective in a standard remote refocus arrangement).
Regarding Claim 20, Millett-Sikking teaches the optical system of claim 15, wherein the optical system is an axially- scanning microscope system, an axially-scanning telescope system, a confocal microscope system, a photolithography system, or a laser cutting and/or engraving system (¶[0073], line 1-14, an x-y scan of the light-sheet 216 can also be introduced to provide synchronized volumetric imaging. The second objective 230 may also be used to scan a volume in the z direction by refocusing the image at the second intermediate image plane, IP2 , which is then collected by the third objective 232 at the third intermediate image plane, IP3. Applying this approach, flexible volume options with x-y-z scanning can be achieved. For example, an x-y scan can be performed, and adjustment in the z direction can then be used to image another volume at a different depth in the sample 206).
Claim Rejections - 35 USC § 103
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Millett-Sikking et al (US 20220260818).
Regarding Claim 2, Millett-Sikking discloses as set forth above and further teaches that wherein the IFPD objective is an air objective (fig. 2A, 230-Obj2). But Millett-Sikking does not specifically disclose that wherein produces a magnification at the intermediate focal plane in a range of four to two times.
However, Millett-Sikking teaches that different choices of magnification, numerical aperture, field of view (FOY) and immersion medium (e.g. water). Table 6 below provides additional examples of primary objective choices. Various scanning regimes and field of view may also be implemented (¶[0096], line 1-6 and Table 6—Magnifications of different objectives (Mag.—M1. M2), Mrr = M1/M2; ---further, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955)).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the microscopy system of Millett-Sikking to have a magnification at the intermediate focal plane in a range of four to two times, for the purpose of high resolution microscopes and improving image contrast (¶[0004], line 1-18).
Claims 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Millett-Sikking et al (US 20220260818) in a view of Nahum et al (US 10281700).
Regarding Claim 16, Millett-Sikking discloses as set forth above but does not specifically disclose that the optical system of claim 15, further comprising a tunable lens driver configured to control the focal length of the tunable lens.
However, Nahum teaches a tunable optical assembly (abstract; figs. 1-3), wherein further comprising a tunable lens driver configured to control the focal length of the tunable lens (fig. 3, 370- IFPD objective; 380-lens controller, 380’, 381, 381’).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the microscopy system of Millett-Sikking by the tunable optical assembly of Nahum for the purpose of providing of an imaging system with a high speed variable focal length lens (col. 1, line 19-25).
Regarding Claim 17, Millett-Sikking - Nahum combination teaches the optical system of claim 16, wherein the focal length of the tunable lens is configured to be adjusted to scan through a sample volume (fig. 3, 320, EFP, EFP1, EFP2, Refp, as disclosed in Nahum).
Regarding Claim 18, Millett-Sikking - Nahum combination teaches the optical system of claim 15, wherein an optical sensor located at the imaging plane of the tunable optical assembly is in communication with at least one processing element (fig. 3, 360—camera, 380, 395--control bus, as disclosed in Nahum).
Regarding Claim 19, Millett-Sikking - Nahum combination teaches the optical system of claim 16, wherein the at least one processing element is configured to control the tunable lens driver (fig. 3, 380, 381-385, 395, as disclosed in Nahum).
Allowable Subject Matter
Claim 7 is rejected as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims in case the 112 rejections of the independent claims are overcome by proper amendments.
The following is an examiner’s statement of reasons for allowance: The prior art taken singularly or in combination fails to anticipate or fairly suggest the limitations of the independent claims, in such a manner that a rejection under 35 U.S.C. 102 or 103 would be proper.
In regard to claim 7, the prior art taken either singly or in combination fails to anticipate or fairly suggest a tunable optical assembly further comprise wherein a deformable mirror adaptive optics element disposed at the pupil.
Claim 8 is also allowable as it depends on claim 7.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the arguments do not apply to any of the references being used in the current new rejections.
Examiner’s Note
Regarding the references, the Examiner cites particular figures, paragraphs, columns and line numbers in the reference(s), as applied to the claims above. Although the particular citations are representative teachings and are applied to specific limitations within the claims, other passages, internally cited references, and figures may also apply. In preparing a response, it is respectfully requested that the Applicant fully consider the references, in their entirety, as potentially disclosing or teaching all or part of the claimed invention, as well as fully consider the context of the passage as taught by the reference(s) or as disclosed by the Examiner.
Conclusion
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 extension fee 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 communication from the examiner should be directed to Jie Lei whose telephone number is (571) 272 7231. The examiner can normally be reached on Mon.-Thurs. 8:00 am to 5:30 pm.
If attempts to reach the examiner by the telephone are unsuccessful, the examiner's supervisor, Thomas Pham can be reached on (571) 272 3689.The Fax number for the organization where this application is assigned is (571) 273 8300.
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/JIE LEI/Primary Examiner, Art Unit 2872