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 Amendment
2. The present office action is made in response to the amendment filed on 07/22/2026. It is noted that in the amendment, applicant has made changes to the claims. There was not any change to be made to the abstract, the drawings and the specification.
3. Regarding to the claims, applicant has amended claims 1, 7, 9, 14-15 and 20, canceled claims 6 and 13, and added a new set of claims, i.e., claims 21-22, into the application.
Response to Arguments
4. The amendments to the claims as provided in the amendment of 07/22/2026, and applicant's arguments provided in the mentioned amendment, pages 5-11, have been fully considered and resulted in the following conclusions.
A) Regarding the claims, the following conclusions are made:
A1) Because applicant has canceled claims 6 and 13 and added a new set of claims, i.e., claims 21-22, into the application, thus the pending claims are now claims 1-5, 7-12 and 14-22;
A2) A review of the newly-added claims 21-22 has resulted that each new claim recites features regarding to the third door which recited in its base claim 1, thus the new claims 21-22 are grouped into the elected Invention II; and
A3) The microscope as recited in the independent amended claim 1 is allowable with respect to the prior art, thus the Election/Restriction mailed to applicant on 02/02/2026 is now withdrawn and all pending claims 1-5, 7-12 and 14-22 are examined in the present office action, see the section of Election/Restriction in the present office action.
B) Regarding the objections of claims 6-7, 15 and 20 set forth in the office action of 05/01/2026, the amendments to the claims as provided in the amendment of 07/22/2026, and applicant’s arguments provided in the mentioned amendment, page 5, have been fully considered and are sufficient to overcome the objections of claims 6-7, 15 and 20 set forth in the mentioned office action.
C) Regarding the rejections of claims 6-7, 13 and 20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the office action of 05/01/2026, the amendments to the claims as provided in the amendment of 07/22/2026, and applicant’s arguments provided in the mentioned amendment, page 6, have been fully considered and are sufficient to overcome the rejections of claims 6-7, 13 and 20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the mentioned office action.
D) Regarding the rejection of claim 1 under 35 U.S.C. 102(a)(1) as being anticipated by Honda et al (Japanese reference No. 2019-66819) and the rejection of claims 6-7, 9, 13, 15 and 20 under 35 U.S.C. 103 as being unpatentable over Honda et al in view of Nakamura et al (EP reference No. 2 031 429) set forth in the office action of 05/01/2026, the amendments to the claims as provided in the amendment of 07/22/2026, and applicant’s arguments provided in the mentioned amendment, pages 6-11, have been fully considered but are sufficient to overcome the rejections of claims over the applied arts set forth in the mentioned office action.
Election/Restrictions
5. Claim 1 is allowable. The restriction requirement between Inventions I and II, as set forth in the Office action mailed on 02/02/2026, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of 02/02/2026 is now withdrawn. Claims 2-5,8, 10-12, 14 and 16-19, directed to Invention I are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Interpretation
6. 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.
7. 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.
8. 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) “an incubation module” as recited in claim 17; and
b) “an illumination unit” as recited in claim 18.
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
9. The following is a quotation of the first paragraph 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.
10. Claims 9, 15 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the following reasons.
a) Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claim is rejected because the disclosure, as originally filed, does not provide support for a microscope having a sample stage and a microscope housing having a first access door, a second access door and a third door wherein the third door is both covered the second access door in each closed state and the third door comprises the second access door as claimed.
Applicant is respectfully invited to review the disclosure, as originally filed wherein the disclosure discloses two embodiments. In the first embodiment, the third door (250) is a part of or coupled to the fist access door (130) and covered the second access door (240, 240a) in closed state of the second access door and the third door, see specification in pages 9-13 and figs. 1-6. In the second embodiment, the third door comprises the second access door, see specification in pages 13-14 and figs. 7-11.
The disclosure, as originally filed, does not disclose that the third door is both covered by the second access door when both the second and third doors are in their closed state and the third door comprises the second access door as claimed.
b) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiency thereof.
11. 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.
12. Claims 1-5, 7-12, and 14-22 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 because each of the features thereof “the third door’s closed state” (line 8) and “the second access door’s closed state” (lines 8-9) lacks a proper antecedent basis.
b) Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the second access door’s opened state” (lines 2-3) lacks a proper antecedent basis.
c) Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the third door’s opened state” (line 2) lacks a proper antecedent basis.
d) Claim 16 is 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.
d1) the feature thereof “the upper side” (line 3) lacks a proper antecedent basis; and
d2) the feature thereof “the microscope housing … closed states” (lines 1-5) makes the claim indefinite due to the use of term “when” in the mentioned feature. Applicant should note that the term thereof "when" renders the claim indefinite because it is unclear whether the limitations following the term are part of the claimed invention. See MPEP § 2173.05(d). Should the terms “when each of” (line 4) appeared in the claim on line 4 be deleted?
e) Claim 18 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 reason as set forth in element d2) above.
f) Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because each of the features thereof “the upper side” (line 3) and “the first access door’s closed state” (line 6) lacks a proper antecedent basis;
g) Each of claims 21-22 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 reason as set forth in element b) above.
h) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Allowable Subject Matter
13. Claims 1-5, 7-12 and 14-22 would be allowable if rewritten/amended to overcome the rejections of the claims under 35 U.S.C. 112 set forth in the present office action.
14. The following is a statement of reasons for the indication of allowable subject matter:
The microscope having a sample stage supporting a sample and a microscope housing having a first access door, a second access door and a third door wherein the first and second access doors provide different ways of access to the microscope stage is allowable with respect to the prior art, in particular, the Japanese reference Nos. 2019-66819 and 2010-55004 and the EP reference No. 2 031 429 by the limitations regarding to the third door and its structural arrangement with the first and second access doors as recited in the features thereof “the third door …the first access door” recited in the claim on lines 7-10. Such an arrangement of the third door and its structural relationship with the first and second access doors as claimed is not disclosed in the prior art.
Conclusion
15. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
16. 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.
17. 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
Prosecution Insights