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 .
DETAILED ACTION
Amendment
The amendment filed on 12/26/2025 has been entered into this application.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: an imaging optical unit within the claims.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-8 and 10-14 is/are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Nakasho et al. (2015/0185460 A1, previously cited reference).
Regarding claims 1 and 14, Nakasho discloses a method (figs. 11, 15, 17, 19 and 21-25) for determining at least one of the phase and the refractive index of a region of an object, comprising:
combination of optical elements (i.e. 3-7) illuminating the object biological sample S region with coherent or partly coherent light laser 2 along an imaging beam path from the object region as far as the image plane via an imaging optical unit a CCD camera 13 of a microscope [pars. 0155], said imaging optical unit including an objective the imaging system that includes an objective 9, a Nomarski prism 10, an analyzer 11, and a tube lens 12 [pars. 0101];
the imaging system imaging the object region into the image plane a number of times with different imaging properties [pars. 0098-105];
the CCD camera 13 recording the imagines of the object region in order to obtain a plurality of intensity recordings of the object region [pars. 0103, 0117, 0132]; and
computer 20 determining at least one of the phase and the refractive index on the basis of the plurality of intensity recordings, wherein the different imaging properties differ at least in terms of different phase shifts which are additionally introduced by Nomarski prism 10, an analyzer 11 into the imaging beam path and which are generated differently than by changing the focusing when carrying out the recordings [pars. 0133-135], and
wherein the different phase shifts which are additionally introduced into the imaging beam path are effected by at least one of introducing at least one optical element (i.e. a Nomarski prism 10, an analyzer 11) into the objective the imaging system that includes an objective 9, a Nomarski prism 10, an analyzer 11, and a tube lens 12 and manipulating at least one optical element of the objective [pars. 0101, 0104, 0107-108].
For the purposes of clarity, the method claim 1 also anticipates/provide the means for apparatus/system claim 14 as rejected above as being anticipated by Nakasho.
As to claims 2-3, 5-6 and 12-13, Nakasho also discloses a structure (figs. 1-25) that is use in a method/system that is implementing limitations such as, wherein the objective (illumination system includes a lens 3, a field stop 4, an image contrast changing unit 5, a Nomarski prism 6, and a condenser lens 7) and/or (the imaging system that includes an objective 9, a Nomarski prism 10, an analyzer 11, and a tube lens 12) has at least one displaceable lens a Nomarski prism 10 for adapting the microscope to different coverslip thicknesses, and wherein manipulating the at least one optical element the Nomarski prism 10 of the objective comprises displacing the displaceable lens with a driving mechanism 21 (claim 2); wherein the objective (the imaging system that includes an objective 9, a Nomarski prism 10, an analyzer 11, and a tube lens 12) comprises a correction ring or a correction slide to displace the at least one displaceable lens a Nomarski prism 10, an analyzer 11, wherein manipulating the at least one optical element a Nomarski prism 10, an analyzer 11 of the objective is further comprises the driving mechanism 21 actuating the correction ring or the correction slide [pars. 0059-60, 0109 and 0118] (claim 3); comprising carrying out a two-dimensional phase determination [pars. 0100, 0182] (claims 5 and 12); wherein the different intensity recordings by CCD camera 13 of the object region each differ in terms of the different phase shifts by Nomarski prism 10, an analyzer 11 which are additionally introduced into the imaging beam path by Nomarski prism 10, an analyzer 11 and which are generated differently than by changing the focusing by the driving mechanism 21 when carrying out the recordings by CCD camera 13, and in terms of phase shifts which are introduced into the imaging beam path by Nomarski prism 10, an analyzer 11 and which are generated by changing the focusing by the driving mechanism 21 when carrying out the recordings, wherein at least one of a three-dimensional phase determination and a refractive index determination is carried out on the basis of the plurality of intensity recordings by CCD camera 13 [pars. 0080-81, 0089-90, 0163] (claims 6 and 13).
As to claims 7 and 10, Nakasho also discloses establishing a mathematical model for describing the phase shifts which are additionally introduced into the imaging beam path via the different imaging properties, wherein the mathematical model takes into account the phase and/or refractive index determination and/or establishing a mathematical model for describing the phase shifts which are additionally introduced into the imaging beam path via the different imaging properties, wherein the mathematical model takes into account the phase and/or refractive index determination. (claims 7 and 10) is represented as can be seen in (figs. 1-10, 12, 14, 20) that the phase and/or refractive index determination is carried out based on mathematical model [pars. 0080-81, 0089-90, 0163].
As to claims 8 and 11, Nakasho further discloses combination of optical elements (i.e. 3-7) illuminating a known test object biological sample S with coherent or partly coherent light laser 2 by the imaging optical unit a CCD camera 13 of the microscope [pars. 0155] along the imaging beam path;
the imaging system imaging the known test object the imaging system into the image plane a number of times with different imaging properties [pars. 0098-105];
the CCD camera 13 recording the imagines of the known test object in order to obtain a plurality of intensity recordings of the test object [pars. 0103, 0117, 0132], wherein the different imaging properties differ in terms of different phase shifts which are additionally introduced by Nomarski prism 10, an analyzer 11 into the imaging beam path and which are generated differently than by changing the focusing when carrying out the recordings by the CCD camera 13 [pars. 0133-135]; and establishing the mathematical model on the basis of the recordings of the test object is represented as can be seen in (figs. 1-10, 12, 14, 20) that the phase and/or refractive index determination is carried out based on mathematical model [pars. 0080-81, 0089-90, 0163].
For the purposes of clarity, the structure recited in claim 11 is symmetrical to the structure recited in claim 8, as such, claim 11 is rejected above as being anticipated by Nakasho.
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.
Claims 4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakasho et al. (2015/0185460 A1, previously cited reference) in view of Goegler et al. (2020/0110254 A1, previously cited reference).
As to claims 4 and 9, Nakasho teaches of at least one optical element of the objective is either of the following (illumination system includes a lens 3, a field stop 4, an image contrast changing unit 5, a Nomarski prism 6, and a condenser lens 7) and/or (the imaging system that includes an objective 9, a Nomarski prism 10, an analyzer 11, and a tube lens 12), as applied to claim 1.
Nakasho is silent regarding to wherein manipulating the at least one optical element of the objective further comprises at least one of changing the temperature of the at least one optical element and deforming the at least one optical element (claim 2); and/or wherein manipulating the at least one optical element of the objective comprises at least one of changing the temperature of the at least one optical element and of deforming the at least one optical element (claim 9)
Goegler from the same field of endeavor teaches that it is known that the refractive index of a material depends on its temperature, and that in order to design the relationship even more precisely and consequently facilitate an even more accurate correction of the spherical aberration, it is preferred in a development for at least one parameter to be captured, said parameter comprising a temperature of the object, a material of an object carrier, an object carrier thickness, an immersion medium for the objective or a wavelength of radiation for imaging the object, with the relationship being modified in respect of the at least one parameter (Goegler, [par. 0036]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify Pretorius in the manner set forth in applicant’s claims, in view of the teaching of Nakasho in order to facilitate an even more accurate correction of aberration with microscope for imaging an object, per the teachings of Goegler.
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-8 and 10-14 is/are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Pretorius et al. (2022/0075169 A1, previously cited reference).
Regarding claims 1 and 14, Pretorius discloses a method for determining at least one of the phase and the refractive index of a region of an object a sample 5 (figs. 1-5) [pars. 0130], comprising:
an illumination objective 2 illuminating the object the sample 5 region with coherent or partly coherent light along an imaging beam path from the object region as far as the image plane via an imaging optical unit detection objective (3) of a microscope Microscope (1), said imaging optical unit including an objective [pars. 0004, 0009, 0013, 0018, 0033];
a detector 18 imaging the object region into the image plane a number of times with different imaging properties [pars. 0007, 0062, 0078, 0080, 0098, 0109, 0112 and 0119]; the detector 18 and/or a programmable memory of the control unit recording the imagines of the object region in order to obtain a plurality of intensity recordings of the object region [pars. 0098 and 0109]; and
a control unit (13) determining at least one of the phase introduced by at least one optical element 12.1 and/or 12.2 and the refractive index on the basis of the plurality of intensity recordings by the detector 8, wherein the different imaging properties differ at least in terms of different phase shifts which are additionally introduced into the imaging beam path by at least one optical element 12.1 and/or 12.2 and which are generated differently than by changing the focusing using 14.1 and/or 14.2 when carrying out the recordings from detector 18, and wherein the different phase shifts introduced by the at least one optical element 12.1 and/or 12.2 which are additionally introduced into the imaging beam path along optical axis A2 are effected by at least one of introducing at least one optical element the at least one optical element 12.1 and/or 12.2 into the objective detection objective (3) and manipulating at least one optical element of the objective detection objective (3) [pars. 0120-139] [pars. 0007-9, 0062, 0078, 0080, 0098, 0109, 0112 and 0119] (claims 1, 7 and 14).
For the purposes of clarity, the method claim 1 also anticipates/provide the means for apparatus/system claim 14 as rejected above as being anticipated by Pretorius.
As to claims 2-3, 5-6 and 12-13, Pretorius also discloses a structure (figs. 1-5) that is use in a method/system that is implementing limitations such as, wherein the objective illumination objective (2) and/or detection objective (3) has at least one displaceable lens optical detection correction element (12.1 and/or 12.2) and/or illumination correction element (12.3 and/or 12.4) and/or optical lens (9.22) for adapting the microscope to different coverslip thicknesses (fig. 6), and wherein manipulating the at least one optical element of the objective comprises adjustment devices (14.1, 14.2, 14.3, 19) displacing the displaceable lens [pars. 0013-28, 0031-45, 0062, 0109, 0119] (claim 2); wherein the objective illumination objective (2) and/or detection objective (3) comprises a correction ring optical detection correction element (12.1 and/or 12.2) and/or illumination correction element (12.3 and/or 12.4) and/or optical lens (9.22), or a correction slide optical detection correction element (12.1 and/or 12.2) and/or illumination correction element (12.3 and/or 12.4) to displace the at least one displaceable lens implicitly included in optical detection correction element (12.1 and/or 12.2) and/or illumination correction element (12.3 and/or 12.4) and/or optical lens (9.22), wherein manipulating the at least one optical element of the objective illumination objective (2) and/or detection objective (3) is further comprises the adjustment devices (14.1, 14.2, 14.3) actuating the correction ring or the correction slide [par. 0027] (claim 3); carrying out a two-dimensional phase determination is included in a refractive index distribution [pars. 0046, 0091-92, 0101, 00127] (claims 5 and 12); and wherein the different intensity recordings by detector 8 of the object sample 5 region each differ in terms of the different phase shifts introduced by optical detection correction element (12.1 and/or 12.2) and/or illumination correction element (12.3 and/or 12.4) and/or optical lens (9.22) which are additionally introduced into the imaging beam path by optical detection correction element (12.1 and/or 12.2) and/or illumination correction element (12.3 and/or 12.4) and/or optical lens (9.22) and which are generated differently than by changing the focusing by the adjustment devices (14.1, 14.2, 14.3) when carrying out the recordings by the detector 8, and in terms of phase shifts which are introduced into the imaging beam path by optical detection correction element (12.1 and/or 12.2) and/or illumination correction element (12.3 and/or 12.4) and/or optical lens (9.22) and which are generated by changing the focusing by the adjustment devices (14.1, 14.2, 14.3) when carrying out the recordings, wherein at least one of a three-dimensional phase determination and a refractive index determination is carried out on the basis of the plurality of intensity recordings by detector 8 (claims 6 and 13).
As to claims 7 and 10, Pretorius also discloses establishing a mathematical model for describing the phase shifts which are additionally introduced into the imaging beam path via the different imaging properties, wherein the mathematical model takes into account the phase and/or refractive index determination and/or establishing a mathematical model for describing the phase shifts which are additionally introduced into the imaging beam path via the different imaging properties, wherein the mathematical model takes into account the phase and/or refractive index determination. (claims 7 and 10) is represented as can be seen in (fig. 6) [pars. 0062, 0119 and 0139] that the phase and/or refractive index determination is carried out based on mathematical model.
As to claims 8 and 11, Pretorius further discloses an illumination objective 2 illuminating a known test object the sample 5 with a laser light source [pars. 0065, 0127-128] a coherent or partly coherent light by the imaging optical unit detection objective (3) of the microscope Microscope (1) along the imaging beam path optical axis A1/A2;
a detector 18 imaging the known test object the sample 5 into the image plane a number of times with different imaging properties [pars. 0007, 0062, 0078, 0080, 0098, 0109, 0112 and 0119];
the detector 18 and/or a programmable memory of the control unit recording the imagines of the known test object in order to obtain a plurality of intensity recordings of the test object sample 5 (figs. 1-5) [pars. 0130] [pars. 0098 and 0109], wherein the different imaging properties differ in terms of different phase shifts which are additionally introduced into the imaging beam path by at least one optical element 12.1 and/or 12.2 and which are generated differently than by changing the focusing using 14.1 and/or 14.2 when carrying out the recordings from detector 18; and establishing the mathematical model on the basis of the recordings of the test object represented as can be seen in (fig. 6) [pars. 0062, 0119 and 0139] that the phase and/or refractive index determination is carried out based on mathematical model.
For the purposes of clarity, the structure recited in claim 11 is symmetrical to the structure recited in claim 8, as such, claim 11 is rejected above as being anticipated by Pretorius.
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.
Claims 4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pretorius et al. (2022/0075169 A1, previously cited reference) in view of Goegler et al. (2020/0110254 A1, previously cited reference).
As to claims 4 and 9, Pretorius teaches of at least one optical element of the objective is either of the following optical detection correction element (12.1 and/or 12.2) and/or illumination correction element (12.3 and/or 12.4) and/or optical lens (9.22), or a correction slide optical detection correction element (12.1 and/or 12.2) and/or illumination correction element (12.3 and/or 12.4), as applied to claim 1.
Pretorius is silent regarding to wherein manipulating the at least one optical element of the objective further comprises at least one of changing the temperature of the at least one optical element and deforming the at least one optical element (claim 2); wherein manipulating the at least one optical element of the objective comprises at least one of changing the temperature of the at least one optical element and of deforming the at least one optical element (claim 9)
Goegler from the same field of endeavor teaches that it is known that the refractive index of a material depends on its temperature, and that in order to design the relationship even more precisely and consequently facilitate an even more accurate correction of the spherical aberration, it is preferred in a development for at least one parameter to be captured, said parameter comprising a temperature of the object, a material of an object carrier, an object carrier thickness, an immersion medium for the objective or a wavelength of radiation for imaging the object, with the relationship being modified in respect of the at least one parameter (Goegler, [par. 0036]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify Pretorius in the manner set forth in applicant’s claims, in view of the teaching of Goegler in order to facilitate an even more accurate correction of aberration with microscope for imaging an object, per the teachings of Goegler.
Response to Arguments
Applicant’s arguments/remarks, (see pages 6-10), filed on 12/26/2025, with respect to the rejection(s) of claim(s) have been fully considered but are not persuasive.
Applicant’s arguments:
a) Applicant argues beginning on page 7, paragraph 1 to page 8, paragraph 5 that Nakasho is directed to differential interference contrast microscopy (paras. [0099] and [0105] of Nakasho).
Applicant argues citing several Appendix, ………………………… (See Appendix A - Wikipedia extract about Differential interference contrast microscopy). …… ……………………………………………………………………………………………………
Applicant argues For separating the polarized light into two orthogonally polarized mutually coherent parts a Nomarski prism can be used (See Appendix B - Wikipedia extract about Nomarski prisms).
Applicant argues ………, an image of a DIC microscope shows the phase differences of the sample (object) through the brightness (brightening or darkening) in the recorded image.
However, such an image is no intensity recording of the object as claimed in claim 1.
Applicant also argues As described in the image of Appendix C "The route of light through a DIC microscope" the polarizing filter on the right side is provided for removing directly transmitted light. However, directly transmitted light would lead to an intensity recording of the sample.
Applicant argues ………, a Nomarski prism is not used to generate a phase shift at all or generate different phase shifts. ………………………………………………… … ……….. a Nomarski prism does not change the phase at all. The analyzer 11 corresponds to the polarizing filter on the right side of the figure in Appendix C.
Because Nakasho is a DIC microscope, …………………………………………… ………..., the method of claim 1 cannot be anticipated by Nakasho. Claim 14 cannot be anticipated for the same reasons. The remaining claims all depend from either claim 1 or 14, and are therefore patentable for at least the foregoing reasons.
Examiner's response:
With respect to argument (a), it is respectfully pointed out to applicant that this argument is not persuasive because it is well settle that the teachings or suggestions of the prior art that have been used as evidence within a rejection of the claimed invention in view of the prior art under 35 U.S.C. 102 or 103, as set forth by the Court, are to be evaluated and determined not just from one or more specifically identified quotes to individual sections of the text of the prior art document but are in fact to be evaluated and determined from all that the prior art document teaches or suggests, In re BODE et al, 193 USPQ 12 at 17 (CCPA, 1977), with some reliance on the knowledge of one of ordinary skill at the time the invention was made in order to provide an enabling disclosure, In re BODE et al, 193 USPQ 12 at 16 (CCPA, 1977).
In addition, while the examiner may or may not agree(s) with the several “Wikipedia extract about Differential interference contrast microscopy” Appendix(s) quoted by the Applicant. In this case, it is respectfully pointed out to applicant that this argument is not persuasive because the claims are considered given their broadest reasonable construction consistent with the Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Applicant is reminded that during examination, claim terms are given their broadest reasonable construction consistent with the Specification. It is not the several “Wikipedia extract about Differential interference contrast microscopy” Appendix(s) such as, Appendix A-C that is/are rejected, it is the claim(s) invention that is rejected in light of the applicant specification, and although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In addition, both the instant application as disclosed in (see title and abstract) [par. 0002-3, 0008-10 and 0018]), and cited references Nakasho [par. 0090] are reasonably concerned with refractive index of a region of an object which the applicant is involved, the cited references are considered as an analogous art.
Further, applicant’s arguments appear(s) to be concern with the interpretation of “at least one optical element” that is anticipated by (i.e. a Nomarski prism 10, and/or an analyzer 11). It is respectfully pointed out to applicant that an optical element limitation is not limited to any particular structure of optical element, and the claim(s) invention is not limited to such embodiment as claimed and/or being argued. Therefore, the limitation of an optical element as claimed is broader than that which the Applicant is arguing using the ““Wikipedia extract about Differential interference contrast microscopy” Appendix(s) such as, Appendix A-C. Therefore, the limitation(s) of claim 1 and 14 is/are within the scope and analysis of Nakasho system configuration as detailed above, considering the (BRI) consistent with the Specification.
In conclusion, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Furthermore, since the applicant has not argued the examiner’s position about the rejection(s) regarding the dependent claims, in the previous Official action. The applicant has acquiesced. It is respectfully pointed out to applicant that this argument is not persuasive because one of ordinary skill before the effective filing date of the claimed invention and/or at the time the invention was made would have fairly and reasonably recognized that the prior art does properly support a rejection of the claimed invention under 35 U.S.C. 102/103.
b) Applicant argues “Pretorius” beginning on page 8, paragraph 6 to page 9, paragraph 3 that The Office Action cites to paragraphs 7 - 9, - 62, 78, 80, 98, 109, 112 and 119 as well as to claims 1, 7, and 14 of Pretorius for instances of the phrase "refractive index" appearing in the reference. All these passages are characterized by the fact that they essentially refer to a refractive index (namely, the refractive index of an immersion medium used, a refractive index of the sample, and/or the refractive index of the medium).
Applicant argues that ……., Pretorius does not describe any calculation of such a refractive index. In particular, there is no disclosure in Pretorius that the refractive index determination is performed based on a plurality of intensity recordings. Pretorius is only directed to light sheet microscopy, wherein aberrations are reduced (title and abstract of Pretorius).
Therefore, Pretorius cannot be said to anticipate Applicant's claims 1 or 14. The dependent claims are allowable for at least the same reasons.
Examiner's response:
With respect to argument (b), it is respectfully pointed out to applicant that this argument is not persuasive because it is well settle that the teachings or suggestions of the prior art that have been used as evidence within a rejection of the claimed invention in view of the prior art under 35 U.S.C. 102 or 103, as set forth by the Court, are to be evaluated and determined not just from one or more specifically identified quotes to individual sections of the text of the prior art document but are in fact to be evaluated and determined from all that the prior art document teaches or suggests, In re BODE et al, 193 USPQ 12 at 17 (CCPA, 1977), with some reliance on the knowledge of one of ordinary skill at the time the invention was made in order to provide an enabling disclosure, In re BODE et al, 193 USPQ 12 at 16 (CCPA, 1977). In this case, it is respectfully pointed out to applicant that this argument is not persuasive because the process and/or step of recognizing the changing of the sample refractive index that allow for the reduction in the spectra in the Zernike coefficients of the arising wavefront errors that deviate from one another specifically in the higher orders is a description of calculating a refractive index [par. 0072]. Also, the step of the recognizing a change in the sample refractive index that results in rotation-symmetrical errors, such as spherical aberration, field-dependent coma, and field-dependent astigmatism is a description of calculating a refractive index [par. 0074].
c) Applicant argues beginning on page 9, paragraph 4 to page 10, paragraph 2 …………………………….. the rejections of claims 2 and 3.
Applicant argues that Regarding Nakasho, the Office Action points to paragraphs 59, 60, 109 und 118 of Nakasho. However, these paragraphs do not mention the coverslip thickness at all. These paragraphs discuss the problem of the shear direction and therefore the direction of the plane in which the ordinary ray and the extraordinary ray extend.
The fact that the DIC microscope according to Nakasho comprises an objective 9, a Nomarski prism 10, an analyzer 11 and a tube lens 12 is not a disclosure that a Nomarski prism 10 and an analyzer 11 is a displaceable lens. In particular, a Nomarski prism 10 and an analyzer 11 are in no way a lens for adapting the microscope to different coverslip thicknesses.
Regarding Pretorius, the Office Action only mentions the optical elements of the shown light sheet microscope (Fig. 2). This microscope includes correction elements 12.1 - 12.4 which serve to correct aberrations which may occur on account of the oblique passage of the illumination radiation BS through the bottom of this light 7 (para. [0123]). In addition, the lens 9.22 is mentioned, which is one of the lenses necessary for providing such a microscope (see para. [0120]). However, there is no disclosure in Pretorius, to use any of these lenses or correction elements for adapting the phase shifts for recording different images.
Therefore, neither Nakasho nor Pretorius discloses the features of claims 2 and 3. Thus, claims 2 and 3 cannot be anticipated for these additional reasons.
Examiner's response:
With respect to argument (c), it is respectfully pointed out to applicant that this argument is not persuasive because as discussed above in relation to Arguments (a)-(b), Applicant Argument (c) is not persuasive, please see above response that correlates to the repeated argument found in the above noted subsection. This/these argument(s) merely appear to be similar/identical to the previously presented argument(s) regarding “DIC”. As such, in view of examiner's response to applicant's arguments regarding the cited Appendix above, it is respectfully pointed out to applicant that applicant argument(s) (c) is/are not persuasive.
In addition, it is respectfully pointed out to applicant that these arguments are not persuasive because the limitations being argue is rejected as being anticipated by Nakasho, and the Applicant have not provided any proof and/or any factual evidence that the claims as recited are not anticipated. Rather, the arguments merely appear to be reference to Appendix that is not disclosed in the as filed instant specification. It is respectfully pointed out to applicant that these arguments are not persuasive because Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited. The claim(s) limitations is broader than the narrow argument being presented in the current argument(s).
In conclusion, it is respectfully pointed out to applicant that these arguments are not persuasive, the rejections are proper, and the argument/remarks for request for reconsideration does not appear to place the application in condition for allowance.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Isiaka Akanbi whose telephone number is (571) 272-8658. The examiner can normally be reached on 8:00 a.m. - 4:30 p.m.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur R. Chowdhury can be reached on (571) 272-2287. The fax phone number for the organization where this application or proceeding is assigned is 703-872-9306.
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/ISIAKA O AKANBI/Primary Examiner, Art Unit 2877