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 .
Status of Claims
Claims 1-7 and 9-20 are pending.
Claims 2-7 and 9-19 are objected to.
Drawings
In view of the amendments to the specification and the cancelation of claim 8, the previous objections to the drawings are hereby withdrawn.
Claim Objections
In view of the amendments to the claims, the previous objections to claims 12 and 20 are hereby withdrawn.
Claim Rejections - 35 USC § 112
In view of the amendments to the claims, the previous rejections of claims 13-19 are hereby withdrawn.
Claim 8 is canceled, therefore the previous rejection of claim 8 under 35 USC 112(b) is moot.
Response to Arguments
Applicant’s arguments, see pages 5-7 of the remarks, filed 24 March 2026, with respect to the rejection of independent claim 1 under 35 USC 103 have been fully considered and are persuasive. The rejections of claims 1-7 and 9-19 under 35 USC 103 have been withdrawn.
Applicant’s arguments, see pages 13-14 of the remarks, filed 24 March 2026, with respect to the rejection of independent claim 20 under 35 USC 103 have been fully considered and are persuasive. The rejection of claim 20 under 35 USC 103 has been withdrawn.
Claim 8 is canceled, therefore the previous rejection of claim 8 under 35 USC 103 is moot.
Allowable Subject Matter
Claims 2-7 and 9-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, for at least the reason that they are not rejected under the double patenting rejection stated below.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 20 of U.S. Patent No. 11,885,949. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, US 11,885,949 claims a laser scanning microscopy system (see claim 1, line 1) comprising: a laser for providing a light source (see claim 1, line 2); a scanning system for scanning the laser beam across a sample (see claim 1, lines 3-4); a detector for detecting emitted light from the sample (see claim 1, line 5); and a phased array acousto-optic deflector (AOD) for controlling the direction and intensity of the laser beam (see claim 1, lines 6-9), wherein the AOD includes an optical element having a surface with one or more steps formed thereon; a conductive layer formed on the surface with the steps; one or more crystals secured to each step; and electrodes positioned on each surface of each crystal (see claim 8).
Regarding claim 20, US 11,885,949 claims a method to perform microscopy (see claim 20, line 1), comprising: providing a light source with a laser (see claim 20, line 2); controlling the direction and intensity of the laser beam using a phased array AOD with one or more steps (see claim 20, lines 3-4), a conductive layer formed on the surface with the steps, and one or more crystals secured to each step (see at least claim 20, lines5-6, where transducers are a conductive layer); scanning the laser beam across a sample (see claim 20, line 9); detecting emitted light from the sample to generate an image of the sample (see claim 20, lines 10-11); applying the laser beam to an optical element having one or more steps each with a predetermined height and one or more crystals or transducers on the one or more steps (see claim 20, lines 12-15); impedance matching the electrical input of the transducers to a predetermined impedance load (see claim 20, lines 16-17); providing an electrical input to deflect the laser at the two or more frequencies (see claim 20, lines 18-19); and generating a sound field in the optical element to deflect a laser beam based on two or more frequencies (see claim 20, lines 20-21).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ADAM W BOOHER whose telephone number is (571)270-0573. The examiner can normally be reached M - F: 8:00am - 4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone Allen can be reached at 571-272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.W.B./ Examiner, Art Unit 2872
/STEPHONE B ALLEN/ Supervisory Patent Examiner, Art Unit 2872