DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant’s election with traverse of Group I in the reply filed on 03/18/2026 is acknowledged. The traversal is on the grounds that the invention of Group I (claims 1- 9), drawn to a confocal microscope, classified in G02B21/0032; as well as Species A, drawn to the illumination unit that includes a fiber relay system, as seen in FIG. 2; and Species 2, drawn to the detection unit that does not includes a fiber relay system, as seen in FIGS. 1 and 2. It is respectfully submitted that each of claims 1-9 are generic to and read on Species A and Species 2. This is not found persuasive because Group II, Claims 10-17, drawn to a method of adjusting the light detector until the intensity of the detection light coming from the test object is optimized, classified in G02B21/008. These claims require completely different/new search area compared to the Group I. Therefore, it would be a serious search and/or examination burden if restriction were not required because of the following reason apply:
The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries)
The requirement is still deemed proper and is therefore made FINAL
3. Claims 10-17 are withdrawn from further consideration.
Claim Rejections - 35 USC § 102
4. 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.
5. Claims 1, 4-5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Pub. No. 2007/0052958 A1 by Ulrich et al. (hereinafter Ulrich).
Regarding Claim 1, Ulrich teaches a confocal microscope (Fig. 1, Abstract, Par. [0002-0003]), comprising:
an illumination unit (Fig. 1 @ 1, 3, Par. [0027]) configured to generate an illumination light bundle (Par. [0027]: laser 3 includes illuminating light of a plurality of wavelengths, which allows multicolor excitation of the sample thus teaches light bundle),
an imaging optics (Fig. 1 @ 9, Par. [0027]) configured to receive detection light (Fig. 1 @ 51, Par. [0027]) and to guide the detection light (Fig. 1 @ 51, Par. [0027]) to further elements (Fig. 1 @ 29, 33, Par. [0027]) of the confocal microscope (Fig. 1, Abstract, Par. [0003]),
a scanner (Fig. 1 @ 21, Par. [0027]) configured to:
direct the illumination light bundle (Par. [0027]: laser 3 includes illuminating light of a plurality of wavelengths, which allows multicolor excitation of the sample thus teaches light bundle) into the imaging optics (Fig. 1 @ 9, Par. [0027]) and deflect the illumination light bundle (Par. [0027]: laser 3 includes illuminating light of a plurality of wavelengths, which allows multicolor excitation of the sample thus teaches light bundle) to generate a scanning illumination (Par. [0027]), and
receive the detection light (Fig. 1 @ 51, Par. [0027]) from the imaging optics (Fig. 1 @ 9, Par. [0027]) and direct the detection light (Fig. 1 @ 51, Par. [0027]) into a detection beam path (Fig. 1 @ 51, Par. [0027]) of the confocal microscope (Fig. 1, Abstract, Par. [0003]),
a sensor (Fig. 1 @ 36, Par. [0027]) disposed in the detection beam path (Fig. 1 @ 51, Par. [0027]),
a pinhole diaphragm (Fig. 1 @ 35, Par. [0027]) arranged in the detection beam path (Fig. 1 @ 51, Par. [0027]) upstream of the sensor (Fig. 1 @ 36, Par. [0027]),
an adjustable light deflector (Fig. 1 @ 29, Par. [0027]) arranged in the detection beam path (Fig. 1 @ 51, Par. [0027]) and configured to direct the detection light through the pinhole diaphragm (Fig. 1 @ 35, Par. [0027]) onto the sensor (Fig. 1 @ 36, Par. [0027]), and
a controller (inherently teaches) configured to:
control the scanner (Fig. 1 @ 21, Par. [0027]) to adjust the confocal microscope in such a manner that the illumination light bundle (Par. [0027]: laser 3 includes illuminating light of a plurality of wavelengths, which allows multicolor excitation of the sample thus teaches light bundle) is directed onto a test object (Fig. 1 @ 15, Par. [0027]), and
control the light deflector (Fig. 1 @ 29, Par. [0027]) in such a manner that an intensity of the detection light coming from the test object (Fig. 1 @ 15, Par. [0027]), as detected by the sensor (Fig. 1 @ 36, Par. [0027]), is optimized (Par. [0027]: detector 33 contains a detection pinhole 35, whose spatial position in conjunction with the position of gimbal-mounted scanning mirror 31 determines the position of the scanning point in the sample, from where point detector 33 receives detection light 51 thus teaches optimized).
Regarding Claim 4, Ulrich teaches the illumination light bundle is configured to excite fluorescent materials to generate fluorescent light (Par. [0002-0003]).
Regarding Claim 5, Ulrich teaches the test object is excitable by the illumination light bundle to generate the fluorescent light (Par. [0002-0003]).
Regarding Claim 7, Ulrich teaches the illumination unit (Fig. 1 @ 1, 3, Par. [0027]) comprises an illumination light source (Fig. 1 @ 3, Par. [0027]: laser), configured to generate illumination light (Fig. 1 @ 5, Par. [0027]); and
wherein the illumination unit (Fig. 1 @ 1, 3, Par. [0027]) is configured to shape the illumination light generated by the illumination light source (Fig. 1 @ 3, Par. [0027]) to create the illumination light bundle (Par. [0027]: laser 3 includes illuminating light of a plurality of wavelengths, which allows multicolor excitation of the sample thus teaches light bundle).
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 2-3, 6 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Ulrich.
Regarding Claims 2-3, Ulrich teaches the controller (See Claim 1 rejection above) but does not explicitly teach is configured to carry out the adjustment of the confocal microscope each time the confocal microscope is switched on/ a predetermined time interval has elapsed.
However, it is considered obvious to try all known solutions when there is a recognized need in the art (carry out the adjustment of the confocal microscope each time the confocal microscope is switched on/ a predetermined time interval has elapsed), there had been a finite number of identified, predictable solutions to the recognized need (adjusting, calibrating, initializing), and when one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success. See MPEP § 2143, E. Furthermore, such an arrangement would imply to one of ordinary skill in the art before the effective filing date of the claimed invention to carry out adjustment of the confocal microscope each time the confocal microscope is switched on/ a predetermined time interval has elapsed in order for ensuring measurement accuracy, safety, and regulatory compliance, preventing costly, dangerous, and inaccurate results. It aligns equipment with standards, correcting for "drift" or wear over time, which improves quality control, reduces material waste, and enhances operational reliability.
Regarding Claim 6, Ulrich teaches the test object, wherein the test object and the confocal microscope (See Claim 1 rejection above) but does not explicitly teach is arranged within a housing of the confocal microscope.
However, the use of a housing is neither unique nor novel and the benefits associated with using a housing to enclose optical components/ test object are further well known to those of ordinary skill in the art. A housing would protect the optical components/ test object from contaminants and would further protect the optical components/ test object from being jarred and thrown out of alignment. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to combine the test object of Ulrich with a housing enclosing the test object for providing the well-known benefits of using a housing to protect the test object from contaminants and being knocked out of alignment.
Regarding Claim 8, Ulrich teaches the illumination unit and wherein the illumination unit is configured to shape illumination light generated by the illumination light source to create the illumination light bundle (See Claims 1, 7 rejection above) but does not explicitly teach comprises a fiber coupler, wherein the confocal microscope is connectable to an external illumination light source via the fiber coupler, and wherein the illumination unit is configured to shape illumination light generated by the external illumination light source to create the illumination light bundle.
However, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to use a fiber coupler, and wherein the confocal microscope is connectable to an external illumination light source via the fiber coupler and wherein the illumination unit is configured to shape illumination light generated by the external illumination light source to create the illumination light bundle in order to provide portability of the confocal microscope.
The examiner takes Official Notice that a fiber coupler, wherein the confocal microscope is connectable to an external illumination light source via the fiber coupler is well-known, or to be common knowledge in the art is capable of instant and unquestionable demonstration as being well-known. As noted by the court in In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418,420 (CCPA 1970).
Regarding Claim 9, Ulrich teaches a beam splitter (Fig. 1 @ 7, Par. [0027]) configured to direct the illumination light bundle (Fig. 1 @ 5, Par. [0027]) and to direct the detection light (Fig. 1 @ 51, Par. [0027]) received from the imaging optics (Fig. 1 @ 9, Par. [0027]) into the detection beam path (Fig. 1 @ 51, Par. [0027]) but does not explicitly teach onto the scanner.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rearrange parts for different configurations in order to optimize the system, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Additional Prior Art
8. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. The reference listed teaches of other prior art method/system of confocal microscope.
US Patent Pub. No. 2005/0018282 A1 by Riedmann.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIL AHMED whose telephone number is (571)272-1950. The examiner can normally be reached M-F: 9:00 AM - 5:00 PM.
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/JAMIL AHMED/Primary Examiner, Art Unit 2877
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