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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 20-28 in the reply filed on 11/26/2025 is acknowledged. The traversal is on the ground(s) that the technical features make a contribution over the prior art of US 6,280,960 (which is the prior art reference referenced by the examiner in the restriction requirement Office Action). In response, the examiner notes that the technical feature is not a special technical feature as it does not make a contribution over the prior art, specifically Kukura (US 20190004299 A1) in view of Ramachandra (Fluorescence correlation spectroscopy: Simulations and Bio-Chemical Applications based on Solid Immersion Lens Concept). See the rejections below for more details (however, an excerpt is pasted here for Applicant’s convenience.)
Kukura teaches a method for measuring a property of an object, the method comprising
providing a sample holder (2; paragraph 40) in a sample solution comprising the object (paragraph 97), such that the object interacts with a surface of the sample holder (paragraphs 104, 90, 40);
illuminating the surface of the sample holder (figure 1);
detecting the scattered light from the object interacting with the surface using an interferometric scattering microscope (figure 1; paragraphs 103-104); and
measuring a property of the object using the detected scattered light (paragraphs 101-106 and 16).
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Figure 1 of Kukura doesn’t explicitly illustrate the above “sample holder” is a “solid immersion lens.”
However, in the specification, Kukura teaches that the sample holder can comprise a solid immersion lens and that this provides the benefits of higher magnification and higher numerical aperture (paragraph 63; claims 10-11). It’s noted that this implies illuminating the surface of the solid immersion lens (figure 1 and paragraph 63). Additionally, like Kukura (and like Applicant), Ramanshandra is directed to a method for optically measuring a property of an object using solid immersion lenses and teaches providing a solid immersion lens (solid immersion lens and SIL in section 3.3 and figure 3.4) in a sample solution (liquid dye in section 3.3 and sample dye sample in figure 3.4) comprising the object (fluorescence labelled molecules on page vi and dye labelled molecules and fluorescing molecules in sections 3.2-3.3) , such that the object interacts with a surface of the solid immersion lens (The objects in the liquid sample are on the planar surface of the solid immersion lens (SIL) and therefore there are many interactions including the interactions involved in the solid immersion lens providing support to hold the objects in the measurement region (section 3.3 and figure 3.4; section 3.3. explains that the objects [the molecules] are in a dye that is disposed directly on the solid immersion lens); illuminating the surface of the solid immersion lens (figure 3.4). Additionally, Ramanshandra teaches that the solid immersion lens provides the benefit of good collection light efficiency.
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It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify figure 1 of Kukura such that the sample holder is a solid immersion lens (in other words, such that the method comprises providing a solid immersion lens in a sample solution comprising the object, such that the object interacts with a surface of the solid immersion lens;illuminating the surface of the solid immersion lens) – in order to achieve higher magnification, higher numerical aperture, and good collection efficiency.
Therefore, the requirement is still deemed proper.
Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
Claim Rejections - 35 USC § 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 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.
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) f or any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 20-22 and 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Kukura (US 20190004299 A1) in view of Ramachandra (Fluorescence correlation spectroscopy: Simulations and Bio-Chemical Applications based on Solid Immersion Lens Concept).
Regarding claim 20, Kukura teaches a method for measuring a property of an object, the method comprising
providing a sample holder (2; paragraph 40) in a sample solution comprising the object (paragraph 97), such that the object interacts with a surface of the sample holder (paragraphs 104, 90, 40);
illuminating the surface of the sample holder (figure 1);
detecting the scattered light from the object interacting with the surface using an interferometric scattering microscope (figure 1; paragraphs 103-104); and
measuring a property of the object using the detected scattered light (paragraphs 101-106 and 16).
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Figure 1 of Kukura doesn’t explicitly illustrate the above “sample holder” is a “solid immersion lens.”
However, in the specification, Kukura teaches that the sample holder can comprise a solid immersion lens and that this provides the benefits of higher magnification and higher numerical aperture (paragraph 63; claims 10-11). It’s noted that this implies illuminating the surface of the solid immersion lens (figure 1 and paragraph 63). Additionally, like Kukura (and like Applicant), Ramanshandra is directed to a method for optically measuring a property of an object using solid immersion lenses and teaches providing a solid immersion lens (solid immersion lens and SIL in section 3.3 and figure 3.4) in a sample solution (liquid dye in section 3.3 and sample dye sample in figure 3.4) comprising the object (fluorescence labelled molecules on page vi and dye labelled molecules and fluorescing molecules in sections 3.2-3.3) , such that the object interacts with a surface of the solid immersion lens (The objects in the liquid sample are on the planar surface of the solid immersion lens (SIL) and therefore there are many interactions including the interactions involved in the solid immersion lens providing support to hold the objects in the measurement region (section 3.3 and figure 3.4; section 3.3. explains that the objects [the molecules] are in a dye that is disposed directly on the solid immersion lens); illuminating the surface of the solid immersion lens (figure 3.4). Additionally, Ramanshandra teaches that the solid immersion lens provides the benefit of good collection light efficiency.
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It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify figure 1 of Kukura such that the sample holder is a solid immersion lens (in other words, such that the method comprises providing a solid immersion lens in a sample solution comprising the object, such that the object interacts with a surface of the solid immersion lens;illuminating the surface of the solid immersion lens) – in order to achieve higher magnification, higher numerical aperture, and good collection efficiency.
Regarding claim 21, Kukura teaches measuring a property of the object includes quantifying the mass of the object (paragraphs 101-106 and 16).
Regarding claim 22, Kukura teaches the measuring a property of the object includes measuring or quantifying a change in the mass of an object (paragraphs 16 and 98-99).
Regarding claim 27, Kukura teaches the illuminating light is spatially and temporally coherent (paragraph 12).
Regarding claim 28, Kukura teaches the object is a protein, a lipid, a carbohydrate, an organic polymer, a nucleic acid, molecule, a virus, a vesicle, an assembly complex, or a virus-like particle (paragraph 71).
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Kukura and Ramachandra as applied to claim 20 above, and further in view of Yamaguchi (US 20220244163 A1).
Regarding claim 23, figure 1 of Kukura doesn’t explicitly illustrate the step of cleaning the solid immersion lens such that the object is removed from the surface of the solid immersion lens.
However, Ramachandra teaches cleaning the solid immersion lens (page 36, paragraph 2). It’s also noted that in the above combination, the element in direct contact with the sample is the solid immersion lens. Additionally, like Kukura (and like Applicant), Yamaguchi is directed to a method for optically measuring a property of an object using light scattering and teaches the step of cleaning surfaces of the measurement device in direct contact with the object such that the object is removed from the surface (paragraphs 10, 54, and 58). Additionally, Yamaguchi teaches this provides the benefit of removing the sample still adhering to the surfaces (paragraphs 10, 54, and 58).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the method comprises the step of cleaning the solid immersion lens such that the object is removed from the surface of the solid immersion lens in order to remove all of the sample still adhering to the solid immersion lens from the last measurement so that it doesn’t interfere with the measurement of the next sample.
Regarding claim 24, the above combination doesn’t explicitly teach the step of flowing air over the solid immersion lens.
However, in the combination with respect to claim 23, the method comprises cleaning the solid immersion lens. Additionally, Kukura teaches the step of flowing air over the elements of the device that have been clean in order to dry the elements (paragraph 154).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above method so that it comprises the step of flowing air over the solid immersion lens in order to dry the solid immersion lens after it has been cleaned.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Kukura and Ramachandra as applied to claim 20 above, and further in view of Castellarnau (US 20150253237 A1).
Regarding claim 25, Kukura doesn’t explicitly teach the step of applying a plasma to the surface of the solid immersion lens.
However, in the above combination, the solid immersion lens acts as the sample support/holder (see the section regarding claim 20, above). Like Kukura (and like Applicant), Castellarnau is directed to a method for optically measuring a property of an object and teaches the step of applying a plasma to the surface of a sample support/holder (paragraph 113). Additionally, Castellarnau teaches it provides the benefit of sterilizing the sample support/holder(paragraph 113).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the method comprises the step of applying a plasma to the surface of the solid immersion lens in order to sterilize the solid immersion lens.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Kukura and Ramachandra as applied to claim 20 above, and further in view of Connolly (US 20190264264 A1).
Regarding claim 26, Kukura doesn’t explicitly the step of functionalising the surface of the solid immersion lens.
However, Kukura teaches that the method can be modified to include a step of functionalizing and that this provides the benefit of targeted detection in the presence of other analytes (paragraph 114). Additionally, Connolly is directed to a method of optically measuring a property of an object , including proteins, and provides a general teaching the step of functionalizing the surface (paragraph 47), where the surface is the support of the sample (figure 7).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the method comprises the step of functionalising the surface of the solid immersion lens (which is the support of the above combination) in order to achieve targeted detection in the presence of other analytes.
Additional Prior Art
US 6 280 960 B1, which discloses a solid immersion lens (7; column 7, lines 50-55), illuminations, and detection (figure 1), and an interferometric scattering microscope (another embodiment mentioned in column 1, lines 29-32).
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US 20050063046 A1 reads, “Therefore, it is possible to bring the solid immersion lens into optically-close contact with the sample … In the present invention, "optical close contact" means a state where the solid immersion lens is optically coupled to the sample through evanescent coupling.” (paragraphs 18-19)
US 20100202041 A1 Reads, “ In the case in which an observation object is observed by use of the observation apparatus of the present invention, the solid immersion lens held by the solid immersion lens holder is caused to contact closely with the observation object” (paragraph 8)
US 20240011885 A1 reads, “[0151] It should be noted that SIL optical elements can be fabricated with facets on the flat, so that only a small central area truncating the facets exists at the center and projects outward from the SIL. This is helpful for positioning a SIL to an object and assuring there is close contact with the surface, even if the object is not completely flat.”
Arata (US 20080158667 A1) is directed to optical measurements and concerned with solid immersion lenses and teaches providing a solid immersion lens in a sample solution comprising the object, such that the object interacts with a surface of the solid immersion lens; and illuminating the surface of the solid immersion lens;
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUFUS L PHILLIPS whose telephone number is (571)270-7021. The examiner can normally be reached M-Th, 2 -10 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached at (571) 270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUFUS L PHILLIPS/ Examiner, Art Unit 2877