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 without traverse of Group I, claims 1-16 in the reply filed on March 9, 2026 is acknowledged.
However, after further consideration, the examiner is withdrawing the restriction requirement of February 9, 2026, as there is no search and/or examination burden in examining all of the originally pending claims. As such, claims 1-20 are pending for examination herein.
Drawings
The drawings are objected to because Figures 1-6 include hand drawn element numbers, making the drawings informal. Additionally, the drawings are objected to because Figures 1 and 7 include color elements without a granted color drawing petition (please see the additional information below). 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.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: elements 200 and 5 as found in Fig. 1. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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
The abstract of the disclosure is objected to because the abstract, while being a concise statement, does not include that which is new in the art to which the invention pertains, as it does not disclose any noteworthy technical features that show an improvement to bio-imaging devices for obtaining mono- or multi-channel images of biological substrates. See the suggestions below for the content of an 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).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, line 11 recites “a mirror in optical communication with each of the plurality of scan lenses”. This limitation is unclear, as it is not clear whether “a mirror” refers to a single mirror that is in optical communication with each of the plurality of scan lenses, or whether there are a plurality of mirrors, one that is in communication with each of the plurality of scan lenses. This causes additional issues with “the mirror” in lines 12-13 and line 15, as it is unclear whether “the mirror” there refers back to a single mirror in line 11 of the claim, or if it refers back to an individual mirror in a plurality of mirrors. Clarification is required.
For purposes of examination, the examiner will interpret the limitation as though “a mirror” is a single mirror (such as mirror 9 in Fig. 2).
As for claim 5, the claim recites “wherein the mirror includes at least two reflective faces”. As this claim is dependent on claim 1, the examiner interprets this mirror to be a single mirror, such as mirror 9 in Fig. 2. However, that mirror only has a single reflective face, as it directs light from reflectors 2 and 3 towards lenses 11, 12 and filters 13, 14. The additional face of this mirror is mirror 6, which, given the elements set forth in claim 1, would not be used here. Therefore, it is unclear how the mirror in claim 5 can have at least two reflective faces, when in the best understanding of the examiner, the mirror in claim 1, and therefore claim 5, is a single mirror with only one reflective face. Is claim 5 better dependent on claim 3?
As for claim 6, the claim recites “wherein a first face of the mirror is configured to place a first scan lens in optical communication with the first optical module”. First, in an extension of the issues of claim 5, the mirror that would work with the first and second optical modules only has a single face. How can “a first face of the mirror” place a first scan lens in optical communication with the first optical module? Second, claim 1 already recites “a first scan lens”. Is ”a first scan lens” in claim 6, then, the same as the first scan lens of claim 1, or is this an additional first scan lens? For purposes of examination, the examiner will interpret the claim as if the mirror reflects light to the first scan lens.
As for claim 7, the claim recites “wherein a second face of the mirror is configured to place a second scan lens in optical communication with the second optical module”. First, in an extension of the issues of claim 5, the mirror that would work with the first and second optical modules only has a single face. How, then, can a second face of the mirror place a second scan lens in optical communication with the second optical module when the same mirror, as seen in Fig. 2, reflects light of the first and second optical modules? Second, claim 1 already recites “a second scan lens”. Is ”a second scan lens” in claim 7, then, the same as the second scan lens of claim 1, or is this an additional second scan lens? For purposes of examination, the examiner will interpret the claim as if the single mirror reflects light to the second scan lens.
As for claim 8, the claim recites “wherein the first face of the mirror or the second face of the mirror is configured to place a third scan lens in optical communication with the third optical module”. First, as noted above, it is unclear how the mirror of claim 5, which is part of a bio-imaging device with only first and second optical modules due to its dependency on claim 1, has two faces. That being said, even assuming the mirror has two faces, mirror 6 and mirror 9 as seen in Fig. 2, it is unclear how either the first or second face of the mirror can place a third scan lens in optical communication with the third optical module, as only the second face of the mirror, mirror 6, is capable of doing so as seen in Fig. 2. Additionally, there is no antecedent basis for the limitation “the third optical module” in claim 8, as claims 1, 5, and 6, the claims on which claim 8 depend, only include first and second optical modules. For purposes of examination, the examiner will consider the claim as if it includes two different mirrors, where only the second face of the mirror can send light to the third scan lens.
Claims 2-4 and 9-16 are rejected by virtue of their dependence on at least claim 1, thereby containing all the limitations of the claims on which they depend.
As for claim 17, the claim recites, in lines 15-19, “ a first dye limiting filter disposed between a first lens and a mirror and having at least two working wavelength ranges, and a second dye limiting filter disposed between a second lens and a mirror and having at least two working wavelength ranges that do not overlap with the working wavelength ranges of the first dye limiting filter” (emphasis added). The double use of “a mirror” here is unclear for two reasons. First, it is unclear whether or not the mirror recited in line 17 is the same mirror as the one in line 15, or if these are supposed to be different mirrors due to the use of the phrase “a mirror”. Second, as discussed above regarding claim 1, Fig. 2 only shows that the two dye limiting filters 13, 14 are between the first and second lenses 11, 12 and that single mirror 9. Because of the above, it is unclear whether the claim recites a single mirror or two mirrors. In the best understanding of the examiner, “a mirror” in line 17 will be read to be the same mirror as “a mirror” in line 15.
As for claim 20, the claim recites “an optional first filter”, “a second filter”, and “a third filter”. However, these filters are unclear given the fact that claim 17, the claim on which claim 20 indirectly depends, already recites “a first dye limiting filter” and “a second dye limiting filter”. Does that mean the optional first filter, the second filter, and the third filter are in addition to the first dye limiting filter and the second dye limiting filter? If so, the current specification and figures do not support this, as they only show two positively set forth filters, filters 13 and 14, and not 4 needed/5 possible filters at the locations claimed. If some of the first, second, and third filters are the first and second dye limiting filters of claim 17, which of the first, second, and third filters equate to the first and second dye limiting filters? Clarification is required. For purposes of examination, the examiner will interpret the second filter of claim 20 to be the first dye limiting filter of claim 17, and the third filter of claim 20 to be the second dye limiting filter of claim 17.
Claims 18 and 19 are rejected by virtue of their dependence on claim 17, thereby containing all the limitations of the claim on which they depend.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
As to claim 1, the prior art of record, taken either alone or in combination, fails to disclose or render obvious a bio-imaging device, the device comprising, among other essential features, a scan head disposed below the scan bed and in optical communication with the first and second optical modules, the scan head comprising a first dye limiting filter disposed between a first scan lens and a mirror, and a second dye limiting filter disposed between the second scan lens and the mirror, in combination with the rest of the limitations of the above claim.
As to claim 17, the prior art of record, taken either alone or in combination, fails to disclose or render obvious a bio-imaging device, the device comprising, among other essential features, a scan head disposed to enable relay of light radiation from the first, second, and third removable optical modules with a biological sample supported by the scan bed, wherein the scan head comprises a first dye limiting filter disposed between a first lens and a mirror and having at least two working wavelength ranges, and second dye limiting filter disposed between a second lens and a mirror and having at least two working wavelength ranges that do not overlap with the working wavelength ranges of the first dye limiting filter, in combination with the rest of the limitations of the above claim.
Regarding the above claims, Fang (Fig. 2) discloses a bio-imaging device comprising a first optical module 1 (associated with light path 73); a second optical module 1 (associated with light path 74); a scan bed (inherent; something must support the sample, particularly as seen in applicant’s prior art Fig. 1) configured to support a biological substrate 6 and enable light radiation to pass therethrough (this is the scanned surface and the sample disclosed on page 5 of the provided translation; the sample is biological as per the abstract); and a scan head 3 disposed below the scan bed and in optical communication with the first optical module and the second optical module (light paths 73 and 74 travel from the optical modules to the scan head as seen in Fig. 2), the scan head comprising: a first scan lens 33 in optical communication with the first optical module (this is the right most lens in Fig. 2), a second scan lens 33 in optical communication with the second optical module (this is the second from the right lens in Fig. 2), and a mirror 32 in optical communication with each of the plurality of scan lenses. Fang also discloses an additional optical module 1 (associated with light path 71). The wavelength for light path 71 is green; the wavelength for light path 73 is blue; the wavelength for light path 74 is infrared (see page 9 of the provided translation in the paragraph starting with “Refer to Figure 2-4”).
US Pat. 5,127,730 to Brelje et al. discloses a multi-color laser scanning confocal imaging system where, in Fig. 5, light from a laser 501 passes through one of three excitation filters 503a-503c, where filter 503a is a dual bandpass filter and filters 503b and 503c are single bandpass filters (see Col. 6, lines 7-19).
US 2018/0135119 to Yan et al. discloses a nucleic acid sequencing system that features (see Fig. 2 for example) a pair of light sources 711, 712 which send light after being combined at a dichroscope 713 to an optical filter set 73 that features a first dual bandpass optical filter 731, a dichroscope 733 that reflects light after filtration to a microobjective 72 that sends light to a gene sequencing chip 6. Light that returns from the chip passes back through the objective, the dichroscope, and then passes through a second dual bandpass filter 732 prior to detection.
US 2018/0372640 to Kaneko discloses an imaging device and imaging method that includes (Fig. 1) a light source 12 for exciting fluorescent dyes bound to a cell C, where the light passes through a multi-bandpass filter 18, is reflected by a dichroic mirror 20, passes through an objective lens 16, and is returned from the sample through the objective, the dichroic mirror, and passes through a second multi-bandpass filter 22 prior to detection.
Finally, WO 2021/246745 to Kim et al. discloses an optical signal detection device for detecting target analytes from a sample (Fig. 2). The device includes a light source module 200 that features a plurality of light source units 210 that passes light through excitation light filter units 310a-310d where the filter 310a can be a dual bandpass filter.
However, while Fang discloses the specifics of the imaging device without the dye limiting (or dual bandpass filters), and while Brelje, Yan, Kaneko, and Kim all disclose imaging devices that rely on dual bandpass filters when sending light through the system to ensure only certain wavelength bands are used for imaging and detection purposes, the prior art, taken either alone or in combination, fails to disclose or render obvious the specifics of the dye limiting filter limitations, including where they are located within the scan head, as set forth in the claimed invention as set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. EP 3399300 to Bolle discloses a fluorescence reference sample arrangement that, in Fig. 8, discloses a reference sample 78 that incorporates a fluorescence material 74 and a dual bandpass filter 76 that is used to calibrate a fluorescence detector 72.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael A. Lyons whose telephone number is (571)272-2420. The examiner can normally be reached Monday - Friday.
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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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/Michael A Lyons/Primary Examiner, Art Unit 2877 May 30, 2026
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