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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 16 December 2025 has been entered.
Claim Rejections - 35 USC § 102
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 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.
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 at the time any inventions covered therein were effectively filed 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 at the time a later invention was effectively filed in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
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(s) 1-7, 16-18, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Gugel (US 2018/0203172).
In regard to claim 1, Gugel discloses a microscope comprising:
(a) an illumination optical system configured to scan a specimen via a scanning portion with excitation light from a light source (e.g., see “… scanning microscope 20 according to the present invention which contains an excitation light source 22 that emits an illuminating light bundle 24 … Illuminating light bundle 24 is deflected with the aid of scanning unit 38 in such a way that the illuminating light bundle that has passed through objective 48 executes a scanning motion on sample 52. Fluorescent radiation is thereby generated in sample 52 by illuminating light bundle 24 … components which correspond to the components used in the embodiment according to FIG. 13 are labeled with the reference characters already used in FIG. 13. FIG. 14 furthermore depicts only those components which are part of non-descanned detection unit 58 or interact directly therewith. The same is true for all further exemplifying embodiments that are described below with reference to FIGS. 15 to 21 … embodiments with any combination of features from different embodiments described above and below …” in Fig. 13, Fig. 17, and paragraphs 143-145, 155, and 179);
(b) a detector which detects fluorescence emitted from the specimen (e.g., see “… Fluorescent radiation is thereby generated in sample 52 by illuminating light bundle 24, said radiation being directed in the form of a detected light bundle 54 … detected light bundle 54 is delivered to two separate detection units labeled generally 56 and 58 in FIG. 13. Detection unit 56 receives detected light bundle 54 after the latter has been delivered back onto scanning unit 38. Detection unit 56 thus constitutes a "descanned" unit. Detection unit 58, on the other hand, receives detected light bundle 54 without the latter having been influenced by scanning unit 38. Detection unit 58 therefore represents a "non-descanned" unit … depicts only those components which are part of non-descanned detection unit 58 or interact directly therewith. The same is true for all further exemplifying embodiments that are described below with reference to FIGS. 15 to 21 … detectors 88 and 95 … embodiments with any combination of features from different embodiments described above and below …” in Fig. 13, Fig. 17, and paragraphs 144, 145, 155, 156, and 179); and
(c) an observation optical system configured to descan via the scanning portion and guide the fluorescence emitted from the specimen to the detector (e.g., “… Fluorescent radiation is thereby generated in sample 52 by illuminating light bundle 24, said radiation being directed in the form of a detected light bundle 54 … detected light bundle 54 is delivered to two separate detection units labeled generally 56 and 58 in FIG. 13. Detection unit 56 receives detected light bundle 54 after the latter has been delivered back onto scanning unit 38. Detection unit 56 thus constitutes a "descanned" unit. Detection unit 58, on the other hand, receives detected light bundle 54 without the latter having been influenced by scanning unit 38. Detection unit 58 therefore represents a "non-descanned" unit … embodiments with any combination of features from different embodiments described above and below …” in paragraphs 144, 145, and 179), wherein the observation optical system includes:
(c1) a first optical filter which has wavelength reflection and transmission characteristics that vary depending on a position where light enters the first optical filter (e.g., see “… component 10 according to the present invention constitutes a spectrally selective beam splitter that transmits the spectrum above the spectral edge, while it reflects the spectrum below the spectral edge in defined fashion (or vice versa) … Component 10 has the property that its spectral edge changes with the location of the incidence of the light along variation axis V … beam splitter 118 that, like filters 110, 112, 114, and 116, represents a spectrally selective component of the kind shown in FIG. 1 …” in Fig. 17 and paragraphs 77, 79, and 157);
(c2) a second optical filter which is in an optical path of light reflected by the first optical filter, has a boundary wavelength of transmission changing with respect to a position along a first direction, and transmits light having a wavelength longer than a first boundary wavelength at a position where the light which has been reflected enters the second optical filter (e.g., see “… spectrally selective component 10 is a variable edge filter, e.g. a long-pass filter or a short-pass filter. As a long-pass filter, the edge filter transmits only the spectrum above a predetermined limit wavelength or spectral edge … Component 10 has the property that its spectral edge changes with the location of the incidence of the light along variation axis V … filter pair that is made up of a respective long-pass filter 110 and 112 and a respective short-pass filter 114 and 116. The two filter pairs thus each constitute a band-pass filter having two spectral edges which can be variably adjusted independently of one another … filters 110, 112, 114, and 116, represents a spectrally selective component of the kind shown in FIG. 1 …” in Fig. 17 and paragraphs 77, 79, 156, and 157); and
(c3) a third optical filter which is in the optical path of the light reflected by the first optical filter, has a boundary wavelength of transmission changing with respect to a position along the first direction, and transmits light having a wavelength shorter than a second boundary wavelength at a position where the light which has been reflected enters the third optical filter (e.g., see “… spectrally selective component 10 is a variable edge filter … as a short-pass filter it transmits the spectrum only below the limit wavelength … Component 10 has the property that its spectral edge changes with the location of the incidence of the light along variation axis V … filter pair that is made up of a respective long-pass filter 110 and 112 and a respective short-pass filter 114 and 116. The two filter pairs thus each constitute a band-pass filter having two spectral edges which can be variably adjusted independently of one another … filters 110, 112, 114, and 116, represents a spectrally selective component of the kind shown in FIG. 1 …” in Fig. 17 and paragraphs 77, 79, 156, and 157), wherein the first boundary wavelength is shorter than the second boundary wavelength (e.g., see “… spectrally selective component 10 is a variable edge filter … as a short-pass filter it transmits the spectrum only below the limit wavelength … Component 10 has the property that its spectral edge changes with the location of the incidence of the light along variation axis V … filter pair that is made up of a respective long-pass filter 110 and 112 and a respective short-pass filter 114 and 116. The two filter pairs thus each constitute a band-pass filter having two spectral edges which can be variably adjusted independently of one another … filters 110, 112, 114, and 116, represents a spectrally selective component of the kind shown in FIG. 1 …” in Fig. 17 and paragraphs 77, 79, 156, and 157), in a plane perpendicular to the first direction, one of the second and third optical filters is tilted relative to the other of the second and third optical filters (e.g., “… spectrally selective component is arranged with its effective surface perpendicular, or in any event almost perpendicular, to the optical axis of the beam path … shift of the spectral edge brought about by a variation of the incidence angle is comparatively small and therefore tolerable. This is typically the case for incidence angles that are less than or equal to 35°, preferably less than or equal to 30°, and optimally less than or equal to 20° …” in paragraph 50 or alternatively it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention the second optical filter of Gugel is “arranged with its effective surface perpendicular” and that the third optical filter of Gugel “almost perpendicular, to the optical axis of the beam path” is “tolerable” because a “shift of the spectral edge brought about by a variation of the incidence angle is comparatively small”).
In regard to claim 2 which is dependent on claim 1, Gugel also discloses that the reflection and transmission wavelength characteristics of the first optical filter vary depending on a position along the first direction (e.g., see “… component 10 according to the present invention constitutes a spectrally selective beam splitter that transmits the spectrum above the spectral edge, while it reflects the spectrum below the spectral edge in defined fashion (or vice versa) … Component 10 has the property that its spectral edge changes with the location of the incidence of the light along variation axis V … beam splitter 118 that, like filters 110, 112, 114, and 116, represents a spectrally selective component of the kind shown in FIG. 1 …” in Fig. 17 and paragraphs 77, 79, and 157).
In regard to claim 3 which is dependent on claim 2, Gugel also discloses that in the plane perpendicular to the first direction, the first optical filter is tilted at an angle of less than 45 degrees relative to the light which enters the first optical filter (e.g., “… spectrally selective component is arranged with its effective surface perpendicular, or in any event almost perpendicular, to the optical axis of the beam path … shift of the spectral edge brought about by a variation of the incidence angle is comparatively small and therefore tolerable. This is typically the case for incidence angles that are less than or equal to 35°, preferably less than or equal to 30°, and optimally less than or equal to 20° …” in paragraph 50). Alternatively it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to dispose the first optical filter of Gugel in a plane intersecting with the first direction at “less than or equal to 35°” “incidence angle” in order to achieve a “shift of the spectral edge” that is “comparatively small and therefore tolerable”.
In regard to claim 4 which is dependent on claim 1, Gugel also discloses that the second optical filter and the third optical filter are movable along the first direction (e.g., see “… Component 10 has the property that its spectral edge changes with the location of the incidence of the light along variation axis V … filter pair that is made up of a respective long-pass filter 110 and 112 and a respective short-pass filter 114 and 116. The two filter pairs thus each constitute a band-pass filter having two spectral edges which can be variably adjusted independently of one another … filters 110, 112, 114, and 116, represents a spectrally selective component of the kind shown in FIG. 1 …” in Fig. 17 and paragraphs 79, 156, and 157).
In regard to claim 5 which is dependent on claim 2, Gugel also discloses that the second optical filter and the third optical filter are movable along the first direction (e.g., see “… Component 10 has the property that its spectral edge changes with the location of the incidence of the light along variation axis V … filter pair that is made up of a respective long-pass filter 110 and 112 and a respective short-pass filter 114 and 116. The two filter pairs thus each constitute a band-pass filter having two spectral edges which can be variably adjusted independently of one another … filters 110, 112, 114, and 116, represents a spectrally selective component of the kind shown in FIG. 1 …” in Fig. 17 and paragraphs 79, 156, and 157).
In regard to claim 6 which is dependent on claim 1, Gugel also discloses that the first optical filter is movable along the first direction (e.g., see “… component 10 according to the present invention constitutes a spectrally selective beam splitter that transmits the spectrum above the spectral edge, while it reflects the spectrum below the spectral edge in defined fashion (or vice versa) … Component 10 has the property that its spectral edge changes with the location of the incidence of the light along variation axis V … beam splitter 118 that, like filters 110, 112, 114, and 116, represents a spectrally selective component of the kind shown in FIG. 1 …” in Fig. 17 and paragraphs 77, 79, and 157).
In regard to claim 7 which is dependent on claim 2, Gugel also discloses that the first optical filter is movable along the first direction (e.g., see “… component 10 according to the present invention constitutes a spectrally selective beam splitter that transmits the spectrum above the spectral edge, while it reflects the spectrum below the spectral edge in defined fashion (or vice versa) … Component 10 has the property that its spectral edge changes with the location of the incidence of the light along variation axis V … beam splitter 118 that, like filters 110, 112, 114, and 116, represents a spectrally selective component of the kind shown in FIG. 1 …” in Fig. 17 and paragraphs 77, 79, and 157).
In regard to claim 16 which is dependent on claim 1, Gugel also discloses that the observation optical system further includes: a reflective element on which light having passed through the first optical filter is incident and which reflects at least a part of the light; a fourth optical filter which is in an optical path of the light reflected by the reflective element, has a boundary wavelength changing with respect to a position along the first direction, and transmits light having a wavelength longer than a third boundary wavelength at a position where the light which has been reflected enters the fourth optical filter; and a fifth optical filter which is in the optical path of the light reflected by the reflective element, has a boundary wavelength changing with respect to a position along the first direction, and transmits light having a wavelength longer than a fourth boundary wavelength at a position where the light which has been reflected enters the fifth optical filter, and the third boundary wavelength is shorter than the fourth boundary wavelength (e.g., see “… component 10 according to the present invention constitutes a spectrally selective beam splitter that transmits the spectrum above the spectral edge, while it reflects the spectrum below the spectral edge in defined fashion (or vice versa) … Component 10 has the property that its spectral edge changes with the location of the incidence of the light along variation axis V … Detection beam path 66 furthermore contains a further beam splitter 162 as well as a long-pass filter 164 and a short-pass filter 166, which are arranged in front of detector 152 and in combination constitute a band-pass filter … in the detection arrangements described above, with the exception of beam splitter 46 and filter 120, all the beam splitters and filters, i.e. edge filters, long-pass filters, and short-pass filters, constitute spectrally selective components of the type according to the present invention …” in Fig. 17 and paragraphs 77, 79, 161, and 174.
In regard to claim 17 which is dependent on claim 2, Gugel also discloses that the observation optical system further includes: a reflective element on which light having passed through the first optical filter is incident and which reflects at least a part of the light; a fourth optical filter which is in an optical path of the light reflected by the reflective element, has a boundary wavelength changing with respect to a position along the first direction, and transmits light having a wavelength longer than a third boundary wavelength at a position where the light which has been reflected enters the fourth optical filter; and a fifth optical filter which is in the optical path of the light reflected by the reflective element, has a boundary wavelength changing with respect to a position along the first direction, and transmits light having a wavelength longer than a fourth boundary wavelength at a position where the light which has been reflected enters the fifth optical filter, and the third boundary wavelength is shorter than the fourth boundary wavelength (e.g., see “… component 10 according to the present invention constitutes a spectrally selective beam splitter that transmits the spectrum above the spectral edge, while it reflects the spectrum below the spectral edge in defined fashion (or vice versa) … Component 10 has the property that its spectral edge changes with the location of the incidence of the light along variation axis V … Detection beam path 66 furthermore contains a further beam splitter 162 as well as a long-pass filter 164 and a short-pass filter 166, which are arranged in front of detector 152 and in combination constitute a band-pass filter … in the detection arrangements described above, with the exception of beam splitter 46 and filter 120, all the beam splitters and filters, i.e. edge filters, long-pass filters, and short-pass filters, constitute spectrally selective components of the type according to the present invention …” in Fig. 17 and paragraphs 77, 79, 161, and 174.
In regard to claim 18 which is dependent on claim 16, Gugel also discloses that the reflective element is a sixth optical filter which has wavelength reflection and transmission characteristics that vary depending on a position where light enters the sixth optical filter or a total reflection mirror (e.g., see “… component 10 according to the present invention constitutes a spectrally selective beam splitter that transmits the spectrum above the spectral edge, while it reflects the spectrum below the spectral edge in defined fashion (or vice versa) … Component 10 has the property that its spectral edge changes with the location of the incidence of the light along variation axis V … Detection beam path 66 furthermore contains a further beam splitter 162 as well as a long-pass filter 164 and a short-pass filter 166, which are arranged in front of detector 152 and in combination constitute a band-pass filter … in the detection arrangements described above, with the exception of beam splitter 46 and filter 120, all the beam splitters and filters, i.e. edge filters, long-pass filters, and short-pass filters, constitute spectrally selective components of the type according to the present invention …” in Fig. 17 and paragraphs 77, 79, 161, and 174).
In regard to claim 20 which is dependent on claim 1, Gugel also discloses a first detector which receives light that is a part of light reflected by the first optical filter and that has travelled through the second optical filter and the third optical filter (e.g., see “… in front of the two detectors … 95, a respective filter pair that is made up of a respective long-pass filter … 112 and a respective short-pass filter … 116. The two filter pairs thus each constitute a band-pass filter having two spectral edges which can be variably adjusted independently of one another …” in Fig. 17 and paragraph 156); and a second detector which receives a part of light that has passed through the first optical filter, wherein a light receiving surface of the first detector and a light receiving surface of the second detector face in a same direction (e.g., see “… Detection beam path 66 furthermore contains a further beam splitter 162 as well as a long-pass filter 164 and a short-pass filter 166, which are arranged in front of detector 152 and in combination constitute a band-pass filter …” in Fig. 17 and paragraph 161).
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gugel (US 2018/0203172) in view of Mao (US 6,495,818).
In regard to claim 8 which is dependent on claim 1, the microscope of Gugel lacks an explicit description of details of the “… detection module …” such as the first direction is a gravitational direction. However, “… spectrally selective component …” details are known to one of ordinary skill in the art (e.g., see “… well-known linear variable filter ("LVF") … wavelength transmittance varies along the vertical direction, i.e., the same direction as the direction of reciprocation of the translation stage …” in the last column 9 paragraph of Mao). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional spectrally selective component orientation (e.g., comprising details such as “wavelength transmittance varies along the vertical direction”, in order to achieve “the same direction as the direction of reciprocation of the translation stage”) for the unspecified spectrally selective component orientation of Gugel and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional spectrally selective component orientation (e.g., comprising details such as the first direction is a gravitational direction) as the unspecified spectrally selective component orientation of Gugel.
In regard to claim 9 which is dependent on claim 2, the microscope of Gugel lacks an explicit description of details of the “… spectrally selective component …” such as the first direction is a gravitational direction. However, “… spectrally selective component …” details are known to one of ordinary skill in the art (e.g., see “… well-known linear variable filter ("LVF") … wavelength transmittance varies along the vertical direction, i.e., the same direction as the direction of reciprocation of the translation stage …” in the last column 9 paragraph of Mao). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional spectrally selective component orientation (e.g., comprising details such as “wavelength transmittance varies along the vertical direction”, in order to achieve “the same direction as the direction of reciprocation of the translation stage”) for the unspecified spectrally selective component orientation of Gugel and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional spectrally selective component orientation (e.g., comprising details such as the first direction is a gravitational direction) as the unspecified spectrally selective component orientation of Gugel.
Claim(s) 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gugel (US 2018/0203172) in view of Tamano (US 2015/0153554).
In regard to claim 12 which is dependent on claim 1, Gugel also discloses that the observation optical system further includes a lens which collects the light reflected by the first optical filter and the collected light is formed between the second optical filter and the third optical filter (e.g., “… a lens 92 and a lens 94 respectively on either side of an intermediate image plane 89 in which an intermediate image of sample 52 is also generated. Lens 94 directs detected light bundle 54 onto a detector 95. A detection filter 90 is arranged in front of detector 95 …” in paragraph 149), the microscope of Gugel lacks an explicit description of details of the “… lens 94 …” such as a concave mirror. However, “… lens …” details are known to one of ordinary skill in the art (e.g., see “… concave mirror 411 that has a positive power instead of the lens 222 … concave mirror 411 is a first optical element that configures the relay optical system and it is a deflection element that deflects the fluorescence in the optical axis direction of the objective 207 …” in paragraphs 51 and 52 of Tamano). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional lens (e.g., comprising details such as “concave mirror 411” instead of refractive lens, in order to achieve additional function of “deflects the fluorescence”) for the unspecified lens of Gugel and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional lens (e.g., comprising details such as a concave mirror) as the unspecified lens of Gugel.
In regard to claim 13 which is dependent on claim 2, Gugel also discloses that the observation optical system further includes a lens which collects the light reflected by the first optical filter and the collected light is formed between the second optical filter and the third optical filter (e.g., “… a lens 92 and a lens 94 respectively on either side of an intermediate image plane 89 in which an intermediate image of sample 52 is also generated. Lens 94 directs detected light bundle 54 onto a detector 95. A detection filter 90 is arranged in front of detector 95 …” in paragraph 149), the microscope of Gugel lacks an explicit description of details of the “… lens 94 …” such as a concave mirror. However, “… lens …” details are known to one of ordinary skill in the art (e.g., see “… concave mirror 411 that has a positive power instead of the lens 222 … concave mirror 411 is a first optical element that configures the relay optical system and it is a deflection element that deflects the fluorescence in the optical axis direction of the objective 207 …” in paragraphs 51 and 52 of Tamano). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional lens (e.g., comprising details such as “concave mirror 411” instead of refractive lens, in order to achieve additional function of “deflects the fluorescence”) for the unspecified lens of Gugel and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional lens (e.g., comprising details such as a concave mirror) as the unspecified lens of Gugel.
In regard to claim 14 which is dependent on claim 1, Gugel also discloses that the observation optical system further includes a lens which causes the light reflected by the first optical filter to turn into parallel light beams and to enter the second optical filter and the third optical filter (e.g., “… a lens 92 and a lens 94 respectively on either side of an intermediate image plane 89 in which an intermediate image of sample 52 is also generated. Lens 94 directs detected light bundle 54 onto a detector 95. A detection filter 90 is arranged in front of detector 95 …” in paragraph 149), the microscope of Gugel lacks an explicit description of details of the “… lens 94 …” such as a concave mirror. However, “… lens …” details are known to one of ordinary skill in the art (e.g., see “… concave mirror 411 that has a positive power instead of the lens 222 … concave mirror 411 is a first optical element that configures the relay optical system and it is a deflection element that deflects the fluorescence in the optical axis direction of the objective 207 …” in paragraphs 51 and 52 of Tamano). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional lens (e.g., comprising details such as “concave mirror 411” instead of refractive lens, in order to achieve additional function of “deflects the fluorescence”) for the unspecified lens of Gugel and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional lens (e.g., comprising details such as a concave mirror) as the unspecified lens of Gugel.
In regard to claim 15 which is dependent on claim 2, Gugel also discloses that the observation optical system further includes a lens which causes the light reflected by the first optical filter to turn into parallel light beams and to enter the second optical filter and the third optical filter (e.g., “… a lens 92 and a lens 94 respectively on either side of an intermediate image plane 89 in which an intermediate image of sample 52 is also generated. Lens 94 directs detected light bundle 54 onto a detector 95. A detection filter 90 is arranged in front of detector 95 …” in paragraph 149), the microscope of Gugel lacks an explicit description of details of the “… lens 94 …” such as a concave mirror. However, “… lens …” details are known to one of ordinary skill in the art (e.g., see “… concave mirror 411 that has a positive power instead of the lens 222 … concave mirror 411 is a first optical element that configures the relay optical system and it is a deflection element that deflects the fluorescence in the optical axis direction of the objective 207 …” in paragraphs 51 and 52 of Tamano). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional lens (e.g., comprising details such as “concave mirror 411” instead of refractive lens, in order to achieve additional function of “deflects the fluorescence”) for the unspecified lens of Gugel and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional lens (e.g., comprising details such as a concave mirror) as the unspecified lens of Gugel.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gugel (US 2018/0203172) in view of O'Connell (US 2008/0088918).
In regard to claim 19 which is dependent on claim 18, Gugel also discloses the first optical filter, the second optical filter, and the third optical filter are accommodated in a first unit, the sixth optical filter, the fourth optical filter, and the fifth optical filter are accommodated in a second unit (e.g., “… Detection module 81 correspondingly comprises a lens 92 and a lens 94 respectively on either side of an intermediate image plane 89 in which an intermediate image of sample 52 is also generated. Lens 94 directs detected light bundle 54 onto a detector 95. A detection filter 90 is arranged in front of detector 95 … further detection module 115 having an additional detector 152. Further lenses 154, 156, 158, and 160 are accordingly provided in detection beam path 66. Detection beam path 66 furthermore contains a further beam splitter 162 as well as a long-pass filter 164 and a short-pass filter 166, which are arranged in front of detector 152 and in combination constitute a band-pass filter …” in paragraphs 149 and 161), the microscope of Gugel lacks an explicit description of details of the “… detection module …” such as the first and second units are configured to be detachably insertable. However, “… detection module …” details are known to one of ordinary skill in the art (e.g., see “… Interchangeable light analysis modules interface to the microscope mainframe and can provide spectral analysis, polarimetry, photometry, fluorometry, or any other light analysis technique coupled to the CMIAL system …” in paragraph 76 of O'Connell). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional microscope configuration (e.g., comprising details such as “Interchangeable light analysis modules”, in order to customize “spectral analysis, polarimetry, photometry, fluorometry, or any other light analysis technique”) for the unspecified microscope configuration of Gugel and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional microscope configuration (e.g., comprising details such as the first optical filter, the second optical filter, and the third optical filter are accommodated in a first unit, the sixth optical filter, the fourth optical filter, and the fifth optical filter are accommodated in a second unit, and the first unit and the second unit are configured to be detachably insertable) as the unspecified microscope configuration of Gugel.
Response to Arguments
Applicant's arguments filed 16 December 2025 have been fully considered but they are not persuasive.
Applicant argues that Gugel discloses “a method for solving a particular problem that arises when a filter is placed in a microscope that scans excitation light onto a specimen and detects fluorescence without descanning”. Examiner respectfully disagrees. Gugel discloses a microscope embodiment comprising combination of features from different described embodiments (e.g., see “… embodiments with any combination of features from different embodiments described above and below …” in paragraph 179), wherein one of the described features is both descanned and non-descanned detection units for detected light bundle 54 (e.g., see “… Fluorescent radiation is thereby generated in sample 52 by illuminating light bundle 24, said radiation being directed in the form of a detected light bundle 54 … detected light bundle 54 is delivered to two separate detection units labeled generally 56 and 58 in FIG. 13. Detection unit 56 receives detected light bundle 54 after the latter has been delivered back onto scanning unit 38. Detection unit 56 thus constitutes a "descanned" unit. Detection unit 58, on the other hand, receives detected light bundle 54 without the latter having been influenced by scanning unit 38. Detection unit 58 therefore represents a "non-descanned" unit …” in paragraphs 144 and 145), and wherein another of the described features is only the descanned detection unit can detect the fluorescent when beam splitter 46 is pivoted out of the beam path for the fluorescent (e.g., see “… beam splitter 46, for example, is pivotable out of the beam path or partly transmissive for the fluorescent radiation …” in paragraph 146). Therefore, the cited prior art teaches or suggests all limitation as arranged in the claims.
Applicant argues that if the person of ordinary skill in the art were to have considered paragraph 50 in combination with an embodiment disclosing multiple spectrally selective components such as the filters 110, 112, 114, and 116, that “person of ordinary skill would still have arranged those components at the same angle relative to the optical axis as each other”, which is again contrary to the “an observation optical system configured to descan via the scanning portion and guide the fluorescence emitted from the specimen to the detector” feature of claim 1. Examiner respectfully disagrees. Gugel discloses (paragraphs 6-9) that it is known to one of ordinary skill that a scanning microscope comprises a spectrally selective component known as “gradient filter” with known characteristics such as “incidence angle at which the detected light bundle is incident onto the filter”. Gugel also discloses or suggests that a tolerable spectral edge shift brought about by a tolerable incidence angle variation such as ≤35° (e.g., “… spectrally selective component is arranged with its effective surface perpendicular, or in any event almost perpendicular, to the optical axis of the beam path … shift of the spectral edge brought about by a variation of the incidence angle is comparatively small and therefore tolerable. This is typically the case for incidence angles that are less than or equal to 35°, preferably less than or equal to 30°, and optimally less than or equal to 20 …” in paragraph 50). Therefore, the cited prior art teaches or suggests all limitation as arranged in the claims.
Applicant's arguments as “discussed in Applicant's prior reply” are not persuasive for the reasons discussed in the previous office actions and above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2019/0101738 teaches a microscope.
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/SL/
Examiner, Art Unit 2884
/UZMA ALAM/Supervisory Patent Examiner, Art Unit 2884