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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/25/2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 78-96, 99-103, 105-106 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al. (US 2005/0001157) in view of Houjou et al. (US 2013/0156287) in view of Tiziani et al. (“Three-dimensional analysis by a microlens confocal arrangement, 1994), and further in view of Johnson (US 6,133,986 from IDS).
Regarding claim 78 Ishida discloses an imaging system for imaging a sample, the system comprising a micro-optical element array, a housing, a scanning state, and sample stage attached to the housing attached to the housing,wherein the sample stage provides a surface onto or over which the sample is disposed such that light is directed by the micro-optical element array, through the sample stage, to and from the sample during imaging of the sample, wherein the housing and the sample stage are together disposed to protect the micro-optical element and scanning stage from the sample during imaging, and wherein the sample stage remains fixed during imaging. (See Ishida Abstract and Figs. 1-2 wherein an imaging system includes a micro-optical element array 101 with a scanning stage, i.e. elements which move the micro-optical elements, and a sample stage 2 onto which a sample is placed and a housing 1/4/5 into which optical elements are placed and said housing and sample stage are disposed to protect the micro-optical element and scanning stage during imaging. During imaging the sample stage remains fixed, i.e. it has no ability to move automatically.)
Ishida also discloses wherein no optical element of the system used for imaging is disposed above the sample when the sample is disposed for imaging. (See Ishida Fig. 2 wherein all optical elements used for imaging are located below the sample. While light 12 is located above the sample such a light is not used for the imaging but to provide additional utility allowing a user to visualize the sample in a traditional manner.)
Ishida does not specifically disclose the sample stage having a transparent window placed below the sample.
Houjou discloses a microscope system wherein a housing includes a transparent window below a sample and onto which a sample is placed for imaging. (See Houjou et al. Abstract and Fig. 2 and [0073] wherein a housing includes a transparent window 27 which together are protect the sample and optics from interacting.)
It would have been obvious to one of ordinary skill in the art to provide a transparent window onto which a sample is placed within a microscope housing as described by Houjou in the device of Ishida because such a window prevents undesirable interaction between a sample and optics and/or mechanical elements within the housing as would be desirable in the device of Ishida.
In regards to the microlens array being focused on the sample and being moved laterally during imaging it is noted that Tiziani et al. discloses a confocal microscope which utilizes microlens array focused on the sample and moves the microlens array laterally with respect to the sample and that such a device is an improvement over a spinning disk system. (See Tiziani Abstract, PG. 569 Col. 2-Pg 579 Col. 1)
It would have been obvious to one of ordinary skill in the art at the time of filing to provide an optical system comprising a microlens array focused on a sample with a lateral scanning as described by Tiziani in the microscope of modified Ishida because such a device offers improved light efficiency and extended sample object field over spinning disk systems as would be desirable in the microscopy system of modified Ishida.
In regards to a scanning stage being used to move the microlens array it is noted that Johnson discloses a confocal microscope wherein a microlens array moved relative to a sample by utilizing a high precision scanning stage. (See Johnson Fig. 36, Col. 21 Lines 40-52,and Col. 25 Lines 30-35 wherein a piezoelectric actuator 110 is connected directly to a microlens array and provides lateral movement thereof along a scan pattern.)
It would have been obvious to one of ordinary skill in the art at the time of invention to utilize a scanning stage as described by Johnson to move the microlens array laterally in the device of modified Ishida because such a stage allows for precise and controlled lateral movements of a microlens array relative to a sample as would be desirable in the device of modified Ishida which requires such movements.
Regarding claim 79 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein the sample is accessible to a user during imaging of the sample. (See Ishida Fig. 2 wherein the sample 20 is not enclosed and is accessible to the user from any direction during imaging.)
Regarding claim 80 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein the sample is laterally accessible to a user during imaging of the sample. (See Ishida Fig. 2 wherein the sample 20 is not enclosed and is accessible to the user from any direction during imaging.)
Regarding claim 81 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein the sample is exposed to outside environment during imaging. (See Ishida Fig. 2 wherein the sample 20 is not enclosed and is exposed during imaging.)
Regarding claim 82 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein the sample protrudes above the transparent window and the housing when the sample is disposed for imaging. (See Ishida Fig. 2 wherein the sample 20 is placed on top of the window and protrudes above window and housing.)
Regarding claim 83 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein no portion of the system obstructs access to the sample by a user from outside environment when the sample is disposed for imaging. (See Ishida Fig. 2 wherein the sample 20 is not enclosed and is accessible to the user from any direction during imaging and is not obstructed from a user.)
Regarding claim 84 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein access to the sample by a user from outside environment is unobstructed by any sample dish when the sample is disposed on or over the transparent window during imaging. (See Ishida Fig. 2 wherein the sample 20 is not enclosed in a sample dish and is accessible to the user from any direction during imaging.)
Regarding claim 85 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein access to the sample by a user from outside environment is unobstructed when the sample is disposed on or over the transparent window during imaging. (See Ishida Fig. 2 wherein the sample 20 is not enclosed and is accessible to the user from any direction during imaging.)
Regarding claims 86-88 modified Ishida discloses all the claim limitations as set forth above but does not specifically disclose the use of an optically transparent sample dish placed on the window.
Houjou et al. discloses a microscope system wherein a sample is placed in an optically transparent dish and on a window for imaging because said container allows holding of liquid materials. (See Houjou Abstract [0002]-[0003] and Fig. 2 wherein a sample is provided in a container C, i.e. dish, and placed on a transparent window 27. Said dish is transparent otherwise cells would not be observable therein.)
It would have been obvious to one of ordinary skill in the art at the time of invention to provide a sample in a optically transparent dish placed on a window of a microscope system as described by Houjou et al. in the device of Ishida because such a dish allows the holding of various sample types including liquids as would be desirable in the device of Ishida.
Also not such dishes are accessible to the user during imaging when placed on the unobstructed sample stage.
Regarding claim 89 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein the sample remains in a fixed position during imaging. (See Ishida Fig. 2 wherein the sample is not moved during imaging)
Regarding claim 90 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein the housing and the transparent window together at least partially enclose the micro-optical element array from outside environment. (See Fig. 2 wherein the housing 1 and 4 and window 2 enclose the microoptical element from the outside.)
Regarding claim 91 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein the micro-optical element array is entirely enclosed from the outside environment. (See Ishida Fig. 2 wherein the microoptical element is enclosed within housing 4 entirely from the outside.)
Regarding claim 92 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein the housing and the transparent window are together disposed to protect the micro-optical element array from any dust or liquid. (See Ishida Fig. 2 wherein the housing 4 and window protect the micro-optical element array from dust or liquid.)
Regarding claim 93 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein the housing and the transparent window are together disposed to protect the micro-optical element array from mechanical impact. (See Ishida Fig. 2 wherein the housing 4 and window protect the micro-optical element array from mechanical impact.)
Regarding claim 94 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein the micro-optical element array is disposed in an interior environment of the system. (See Ishida Fig. 2 wherein the housing 4 houses micro-optical element array, i.e. it is in an interior environment.)
Regarding claim 95 modified Ishida discloses all the claim limitations as set forth above as well as the device comprising optics arranged to provide an optical path for light to and from the micro-optical element array, wherein the housing and the transparent window are together disposed to protect the optics from outside environment. (See Ishida Fig. 2 wherein there are optics arranged direct light to and from array and the housing and window protect the optics from outside environment.)
Regarding claim 96 modified Ishida discloses all the claim limitations as set forth above as well as the device comprising a detector, wherein the housing and the transparent window are together disposed to protect the detector from outside environment. (See Ishida Fig. 2 wherein there is a detector, i.e. camera, and housing 5 and window protect the detector from outside environment.)
Regarding claim 99 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein the housing and the transparent window are together disposed to protect the scanning stage from outside environment. ( See Ishida Fig. 2 wherien the housing 4 and transparent window protect scanning stage from the outside environment during imaging.)
Regarding claim 100 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein the scanning stage is disposed in an interior environment of the system. (See Ishida Fig. 2 wherein the scanning stage is housed in interior environment of housing 4.)
Regarding claim 101 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein only the micro-optical element array is in motion during imaging of the sample. (See Ishida Fig. 1 and 2 wherein only the micro-optical element array is in motion during certain portions of imaging.)
Furthermore such limitations are directed to intended uses of the claim device which do not define structural elements which differentiate the claimed invention from the cited prior art. See MPEP 2115.
Regarding claim 102 modified Ishida discloses all the claim limitations as set forth above as well as the device comprising a detector, wherein the detector and the sample remain in a fixed position during the imaging. (See Ishida Figs. 1-2 wherein the detector, i.e. camera does not move during imaging or otherwise.)
Regarding claim 103 modified Ishida discloses all the claim limitations as set forth above as well as the device wherein the sample is not inserted into any cartridge, container, or holder during imaging. (See Ishida Fig. 2 wherien the sample 20 is not inserted into a cartridge of holder)
Furthermore it is noted that such limitations are directed to materials worked on and intended uses of the claimed invention which do not define structural elements which differentiate the claimed invention from the cited prior art. See MPEP 2114 and 2115.
Regarding claim 105 modified Ishida discloses all the claim limitations as set forth above but does not specifically disclose wherein the micro-optical element array has a focal plane from 10 microns to 200 microns above the transparent window.
It is noted that modified Ishida discloses the micro-optical element is focused on the sample plane, i.e. above the window and glass slide/well bottom, and such a modification would have required a mere change in dimension of the glass slide/well bottom so that the sample and focal plane is 10 microns to 200 microns above the transparent window which would have been obvious to one of ordinary skill in the art to obtain clear images of the sample and because a change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 106 modified Ishida discloses all the claim limitations as set forth above but does not specifically disclose wherein a distance between the micro-optical element array and the transparent window is less than 500 micrometers.
It is noted that such a modification would have required a mere change in dimension, i.e. distance between micro-optical element and transparent window, which would have been obvious to one of ordinary skill in the art at the time of filing in order to reduce device size and optimize compactness and because a change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. In response to applicant’s new combination of claim features the examiner has provided new art and rational to teach such a combination and make up for any such deficiencies in the previous rejections. As such applicant’s arguments are moot.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN M HURST whose telephone number is (571)270-7065. The examiner can normally be reached on M-F 7AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Marcheschi can be reached on 571-272-1374. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN M HURST/ Primary Examiner, Art Unit 1799