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
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention or Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/11/2026.
Applicant’s election without traverse of Invention I and Species B drawn to Fig. 9 in the reply filed on 5/11/2026 is acknowledged.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s):
Claim 1: “a beam steering mirror; a steering motor configured to move the beam steering mirror to each of two or more positions, wherein at each of the two or more positions the beam steering mirror is configured to steer the light sheet through the objective lens to a different selected reflector of the two or more reflectors.”
Claim 2: “the distances from each of the two or more reflectors to the optical axis are substantially equal.”
Claim 3: “the angular separations of the two or more reflectors about the optical axis are substantially equal.”
Claim 11: “each of the two or more reflectors is attached to a sample stage of the microscope.”
Claim 12: “each of the two or more reflectors is attached to the objective lens.”
Claim 13: “each of the two or more reflectors independently comprises a prism having a reflective surface”
. No new matter should be entered.
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.
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 1-13 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. Claim 1 recites “each of the two or more positions the beam steering mirror is configured to steer the light sheet through the objective lens to a different selected reflector.” The recited limitation is indefinite because one of ordinary skill in the art would not understand if the steering mirror had an initial position that steer the light sheet through the objective lens to one of the two or more reflectors, or one in which it is not steering the light sheet to any reflector. Without this knowledge one of ordinary skill cannot determine which of the at least two reflectors would be “a different selected reflector.” For examination purposes the steering mirror only need to steer the light sheet to any object at any time.
Claims 2-13 are similarly rejected due to dependency.
Regarding Claim 7. Claim 7 recites “the selected reflector.” There is insufficient antecedent basis for this limitation in the claim.
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 (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claims 1, 4 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20230266246 A1 to Siebenmorgen et al.
Regarding Claim 1. Siebenmorgen discloses a microscope for imaging a sample within a sample volume, wherein the microscope comprises: a laser configured to emit an illumination light (Fig. 1 optical fibre 11, para 91 a light source (not depicted here), for example a laser,); a beam shaper configured to generate a light sheet from the illumination light (Fig. 1 lens 12); an objective lens having an optical axis, wherein the objective lens is configured to transmit the light sheet to and transmit detection light exiting from the sample volume ( Fig. 1 microscope objective 36, para 99); two or more reflectors each located in a different position in a sample plane that transects the sample volume orthogonal to the optical axis (Fig. 1 splitter 32 and mirror 48); a beam steering mirror (Fig. 1 pivotable mirror 14); a steering motor (para 43 “a motor-driven drive or a piezo-drive, in particular a drive to be controlled by the control unit” and para 104 “adjusting the mirror 14, optionally under the control of the control unit 100.”) configured to move the beam steering mirror to each of two or more positions, wherein at each of the two or more positions the beam steering mirror is configured to steer the light sheet through the objective lens to a different selected reflector of the two or more reflectors, the light sheet reflected from the selected reflector through the sample volume (See Fig. 1 and para 104); and an imager configured to image the detection light transmitted by the objective lens (Fig. 1 camera 90).
Regarding Claim 4. Siebenmorgen further discloses the microscope further comprises: a remote focuser configured to position a beam waist of the light sheet substantially at an intersection of the sample plane and the optical axis (Fig. 1 tube lens 46).
Regarding Claim 8. Siebenmorgen further discloses the microscope further comprises: a beam structurer configured to add structure the light sheet (See Fig. 9 spatial light modulator 80).
Regarding Claim 9. Siebenmorgen further discloses the beam structurer comprises a spatial light modulator (See Fig. 9 spatial light modulator 80).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Siebenmorgen as applied to claim 1 in view of US 20220331910 A1 to Ohmori.
Regarding Claim 5. As stated above Siebenmorgen discloses all the limitations of base claim 1.
Siebenmorgen does not specifically disclose that the beam shaper comprises a cylindrical lens.
However, Ohmori discloses cylindrical lens are known elements of a beam shaper (See at least para 46), as the substitution of one known element for another yields predictable results to one of ordinary skill in the art (MPEP2143(I)(B), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include that the beam shaper comprises a cylindrical lens.
Allowable Subject Matter
Claims 2-3, 6-7 and 10-13 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDMOND C LAU whose telephone number is (571)272-5859. The examiner can normally be reached M-Th 8am-6pm EST.
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/EDMOND C LAU/ Primary Examiner, Art Unit 2871
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