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 4/29/2026.
Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/29/2026 has been entered.
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 1-6 and 9-20 is rejected under 35 U.S.C. 103 as being unpatentable over Millett-Sikking et al (US 20220260818) in a view of Lee et al, “Two-photon microscopy with dynamic focusing objective using a liquid lens”; Proc. of SPIE Vol. 7569 756923-1-756923-7, 26 February 2010.
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 adjacent the tunable lens along 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).
But Millett-Sikking does not specifically disclose that wherein the tunable lens having a focal length that is adjustable through modulation of the refractive index or shape of internal elements of the tunable lens.
However, Lee teaches a variable focus microscope (abstract; figs. 1-2), wherein the tunable lens having a focal length that is adjustable through modulation of the refractive index or shape of internal elements of the tunable lens (fig. 1(a-b), liquid lens; abstract, line 1-6, a variable focus microscope without moving parts for axial focusing; A custom dynamic focusing objective was recently developed that incorporates a liquid lens within the optical design of a custom microscope; page 756923-1, line 25-31, Dynamic focusing objective using a liquid lens; The actual change in curvature of the liquid lens; This was achieved through a curvature change controlled by a applied external voltage).
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 variable focus microscope of Lee for a purpose of providing provide a faster, more robust, and cost-effective solution to imaging at high resolution. (abstract, line 1-6).
Regarding Claim 2, Millett-Sikking -Lee combination teaches that wherein the IFPD objective is an air objective (fig. 2A, 230-Obj2, as disclosed in Millett-Sikking), and produces a magnification at the intermediate focal plane in a range of four to two times (¶[0096], line 1-6 and Table 6—Magnifications of different objectives (Mag.—M1. M2), Mrr = M1/M2; ---so magnification can have values as claimed, since 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)).
Regarding Claim 3, Millett-Sikking -Lee combination teaches that the tunable optical assembly of claim 1, further comprising: a first tube lens (fig. 2A, 212-TL1, as disclosed in Millett-Sikking); and a second tube lens (fig. 2A, 228-TL2, as disclosed in Millett-Sikking),
the first tube lens being upstream of the second tube lens in the tunable optical assembly (fig. 2A, 212-TL1, 228-TL2, as disclosed in Millett-Sikking) and the second tube lens (fig. 2A, 228-TL2, as disclosed in Millett-Sikking) being upstream of the IFPD objective (fig. 2A, , 230-Obj2, as disclosed in Millett-Sikking) in the tunable optical assembly.
Regarding Claim 4, Millett-Sikking -Lee combination teaches that 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, as disclosed in Millett-Sikking).
Regarding Claim 5, Millett-Sikking -Lee combination teaches that 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, as disclosed in Millett-Sikking); 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, as disclosed in Millett-Sikking).
Regarding Claim 6, Millett-Sikking -Lee combination teaches that 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, as disclosed in Millett-Sikking).
Regarding Claim 9, Millett-Sikking -Lee combination teaches that 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, as disclosed in Millett-Sikking).
Regarding Claim 10, Millett-Sikking -Lee combination teaches that 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-Lee combination is same to that recited in the claims, then it is expected that optical functions/properties provided by Millett-Sikking-Lee combination 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 -Lee combination teaches that 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-Lee combination is same to that recited in the claims, then it is expected that optical functions/properties provided by Millett-Sikking-Lee combination 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 -Lee combination teaches that the tunable optical assembly of claim 1, further comprising: a relay lens disposed downstream of the tunable lens (fig. 2A, 234-TL3, as disclosed in Millett-Sikking).
Regarding Claim 13, Millett-Sikking -Lee combination teaches that 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-Lee combination is same to that recited in the claims, then it is expected that optical functions/properties provided by Millett-Sikking-Lee combination 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 -Lee combination teaches that 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, as disclosed in Millett-Sikking).
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 adjacent to the tunable lens along 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).
But Millett-Sikking does not specifically disclose that wherein the tunable lens having a focal length that is adjustable through modulation of the refractive index or shape of internal elements of the tunable lens.
However, Lee teaches a variable focus microscope (abstract; figs. 1-2), wherein the tunable lens having a focal length that is adjustable through modulation of the refractive index or shape of internal elements of the tunable lens (fig. 1(a-b), liquid lens; abstract, line 1-6, a variable focus microscope without moving parts for axial focusing; A custom dynamic focusing objective was recently developed that incorporates a liquid lens within the optical design of a custom microscope; page 756923-1, line 25-31, Dynamic focusing objective using a liquid lens; The actual change in curvature of the liquid lens; This was achieved through a curvature change controlled by a applied external voltage).
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 variable focus microscope of Lee for a purpose of providing provide a faster, more robust, and cost-effective solution to imaging at high resolution. (abstract, line 1-6).
Regarding Claim 16, Millett-Sikking -Lee combination teaches that the optical system of claim 15, further comprising a tunable lens driver configured to control the focal length of the tunable lens (fig. 2, computer-applying voltage; page 756923-1, line 25-31, Dynamic focusing objective using a liquid lens; The actual change in curvature of the liquid lens; This was achieved through a curvature change controlled by a applied external voltage, as disclosed in Lee; ¶[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, as disclosed in Millett-Sikking).
Regarding Claim 17, Millett-Sikking -Lee - 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. 1(a), liquid lens, sample; fig. 4(b), scanning with different depth, as disclosed in Lee).
Regarding Claim 18, Millett-Sikking -Lee - 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. 1(a), to detector; fig. 5, EM-CCD (camera), as disclosed in Lee).
Regarding Claim 19, Millett-Sikking -Lee - 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. 2, computer-applying voltage; page 756923-1, line 25-31, Dynamic focusing objective using a liquid lens; The actual change in curvature of the liquid lens; This was achieved through a curvature change controlled by a applied external voltage, as disclosed in Lee).
Regarding Claim 20, Millett-Sikking -Lee combination teaches that 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, as disclosed in Millett-Sikking).
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
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
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