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 .
Response to Amendment
The cancellation of Claims 1-34 in the preliminary amendment filed 6/17/2024 is acknowledged and accepted.
The addition of Claims 35-54 in the preliminary amendment filed 6/17/2024 is acknowledged and accepted.
Priority
Acknowledgment is made of applicant’s claim for priority under 35 U.S.C. 119 (e).
Drawings
The originally filed drawings were received on 11/16/2023. These drawings are acceptable.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 35-54 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 35 recites the limitations ‘…dispensing, via said fluid delivery line, immersion fluid into said chamber, wherein, after said dispensing, said chamber has at least a predetermined amount of immersion fluid disposed therein; and maintaining said at least said predetermined amount of said immersion fluid in said chamber.’ (Emphasis added). Applicants cite Paragraphs 0060, 0080-0084, 0093, 0097, 0208-0210 as providing support for these limitations. Additionally, Figures 28, 35 appear to be related to the recited limitations. However, it does not appear that these cited passages and figures provide adequate support for the claimed limitations. Thus, it is believed that Claim 35 contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 36-44 are dependent on Claim 35, and hence inherit the deficiencies of Claim 35.
Claim 45 recites the limitations ‘…a processor configured to, in response to a determination that said optical immersion lens does not have a predetermined level of said immersion fluid, activate said pump to deliver said immersion fluid to said optical immersion lens until said optical immersion lens has at least said predetermined level of said immersion fluid.’ (Emphasis added). Applicants cite Paragraphs 0060, 0080-0084, 0093, 0097, 0208-0210 as providing support for these limitations. Additionally, Figures 28, 35 appear to be related to the recited limitations. However, it does not appear that these cited passages and figures provide adequate support for the claimed limitations. Thus, it is believed that Claim 45 contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 46-54 are dependent on Claim 45, and hence inherit the deficiencies of Claim 45.
Additionally, the following claims and limitations also appear to fail to comply with the written description requirement:
Claim 36: ‘…between (a) and (b), determining said optical immersion lens does not have said predetermined amount of immersion fluid on said optical immersion lens.’
Claim 37: ‘…said determining is an automatic determining.’
Claim 38: ‘…said determining comprises use of a sensor configured to determine said amount of said immersion fluid on said optical lens.’
Claim 39: ‘…said determining comprises use of a timer to determine a time since the last addition of said immersion fluid.’
Claim 40: ‘…said optical immersion lens is a portion of a system configured to autonomously image a sample for at least 2 days using at least in part said objective lens.’
Claim 44: ‘…said fluid delivery line and said fluid removal line operate in tandem.’
Claim 50: ‘…said automated fluidic module is configured to maintain said predetermined level of said immersion fluid on both said optical immersion lens and said another optical immersion lens.’
Claim 51: ‘…said automated fluidic module maintains said optical immersion lens under said immersion fluid for at least about 5 days.’
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.
Claim 50 is 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.
Claim 50 recites the limitation "said another optical immersion lens" in line 3. 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.
Claim(s) 35, 41-47, 53-54 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shimada (JP 2019-128371A, English translation attached to reference).
Shimada discloses a method (See for example Abstract; Figures 1-11) for automatically maintaining an amount of immersion fluid (See for example ‘F’ in Figure 3) on an optical immersion lens (See for example 7, 19 in Figures 1, 3), comprising providing a chamber (See for example upper surface of 19, 23, 25, 29 in Figures 1, 3) fluidically coupled to a fluid delivery line (See for example 39 in Figure 1), wherein said chamber comprises said optical immersion lens; dispensing, via said fluid delivery line, immersion fluid into said chamber, wherein, after said dispensing, said chamber has at least a predetermined amount of immersion fluid disposed therein (See for example Figures 3-5); and maintaining said at least said predetermined amount of said immersion fluid in said chamber (See for example Figures 3-5; Pages 2-5, ‘First Embodiment’ description in English translation, particularly Page 4, Paragraph 5 of English translation. See also Page 7, Paragraph 2 of English translation). Shimada further discloses using said optical immersion lens to image at least a portion of an in situ biological sample (See for example ‘S’ in Figure 1); said chamber is configured to capture excess immersion fluid (See for example upper surface of 19, 23, 25, 29 in Figures 1, 3); using a fluid removal line to remove said immersion fluid from said chamber (See for example drain 29b in Figure 1); said fluid delivery line and said fluid removal line operate in tandem (See for example 39, 29b in Figure 1).
Shimada additionally discloses an automated fluidic module (See for example Abstract; Figures 1-11) for an optical immersion lens (See for example 7, 19 in Figures 1, 3), comprising a pump (See for example 37 in Figure 1) coupled to a fluid delivery line (See for example 39 in Figure 1) configured to dispense an immersion fluid (See for example ‘F’ in Figure 3) into an immersion fluid collar (See for example upper surface of 19, 23, 25, 29 in Figures 1, 3) disposed on said optical immersion lens; and a processor (See for example 13 in Figure 1) configured to, in response to a determination that said optical immersion lens does not have a predetermined level of said immersion fluid, activate said pump to deliver said immersion fluid to said optical immersion lens until said optical immersion lens has at least said predetermined level of said immersion fluid (See for example Figures 3-5; Pages 2-5, ‘First Embodiment’ description in English translation, particularly Page 4, Paragraph 5 of English translation. See also Page 7, Paragraph 2 of English translation). Shimada further discloses said immersion fluid is water (See for example ‘F’ in Figure 3; Page 3, Paragraph 11 of English translation); said immersion collar is configured to hold said immersion fluid on said immersion lens (See for example ‘F’, upper surface of 19, 23, 25, 29 in Figures 1, 3); said immersion fluid collar is configured to capture excess immersion fluid (See for example upper surface of 19, 23, 25, 29 in Figures 1, 3); and an additional pump configured to remove said immersion fluid from said immersion fluid collar (See for example Page 7, Paragraph 4).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 40, 51 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimada in view of Kawahito (JP 2010-026218 A, English translation attached to reference).
Shimada discloses the invention as set forth above, except for said optical immersion lens is a portion of a system configured to autonomously image a sample for at least 2 days using at least in part said objective lens, or said automated fluidic module maintains said optical immersion lens under said immersion fluid for at least about 5 days. However, it is well known in optical microscopy to perform long term observation of a sample. For example, Kawahito teaches a conventional microscope observation system (See for example Abstract; Figures 1-6) which includes an immersion objective (See for example 22A in Figures 1-3). In particular, Kawahito teaches that such microscope observation system with immersion objective can be used to perform real-time, time-lapse observation of live cells over a period of multiple hours (See for example Page 6, Paragraph 4 of English translation) without deterioration of optical performance of the immersion lens. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have said optical immersion lens is a portion of a system configured to autonomously image a sample for at least several hours using at least in part said objective lens, or said automated fluidic module maintains said optical immersion lens under said immersion fluid for at least several hours, as taught by Kawahito, in the system and method of Shimada, to allow the microscope system to be capable of performing real-time, time-lapse observation of samples while maintaining the optical performance of the immersion objective. The combined teachings of Shimada and Kawahito do not specifically disclose performing such observation over 2 or 5 days. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to perform such observation over 2 or 5 days, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to perform such observation over 2 or 5 days, to obtain real-time, time-lapse observation of samples over an extended period of time, thus allowing for observation of long term or slowly occurring phenomena in a sample. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
Claim(s) 36-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimada in view of Kawahito.
Shimada discloses the invention as set forth above, except for determining said optical immersion lens does not have said predetermined amount of immersion fluid on said optical immersion lens; said determining is an automatic determining; and said determining comprises use of a sensor configured to determine said amount of said immersion fluid on said optical lens. However, Kawahito teaches a conventional microscope observation system (See for example Abstract; Figures 1-6) which includes an immersion objective (See for example 22A in Figures 1-3). In particular, Kawahito teaches that such microscope observation system with immersion objective includes an immersion fluid detection unit (See for example Figures 3-4) in the form of an optical fiber sensor (See for example 81 in Figure 3), light source (See for example 111 in Figure 3) and light detector (See for example 112 in Figure 3), thus allowing for automated detection of immersion fluid level near the tip of the immersion objective (See for example Page 3, Paragraph 5-Page 4, Paragraph 4). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the determining said optical immersion lens does not have said predetermined amount of immersion fluid on said optical immersion lens; said determining is an automatic determining; and said determining comprises use of a sensor configured to determine said amount of said immersion fluid on said optical lens, as taught by Kawahito, in the device and method of Shimada, to prevent evaporation of the immersion fluid on the tip of the immersion objective, thus preventing the introduction of optical noise and reduction of optical performance of the immersion objective.
Claim(s) 49-50, 52, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimada in view of Kawahito.
Shimada discloses the invention as set forth above, except for another optical immersion lens and another fluid delivery line configured to dispense said immersion fluid onto said another optical immersion lens; said automated fluidic module is configured to maintain said predetermined level of said immersion fluid on both said optical immersion lens and said another optical immersion lens; and an additional optical immersion lens coupled to an additional immersion fluid collar. However, the use of multiple microscope objectives is well known and conventional in microscopy. For example, Kawahito teaches a conventional microscope observation system (See for example Abstract; Figures 1-6) which includes an immersion objective (See for example 22A in Figures 1-3) and a second microscope objective (See for example 22B in Figure 1) attached to a revolving turret (See for example 23 in Figure 1). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have multiple microscope objectives, as taught by Kawahito, in the device and method of Shimada, to allow for different magnification objectives to be used during observation of the sample. The combined teachings of Shimada and Kawahito do not specifically disclose another optical immersion lens and another fluid delivery line configured to dispense said immersion fluid onto said another optical immersion lens; said automated fluidic module is configured to maintain said predetermined level of said immersion fluid on both said optical immersion lens and said another optical immersion lens; and an additional optical immersion lens coupled to an additional immersion fluid collar. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have another optical immersion lens and another fluid delivery line configured to dispense said immersion fluid onto said another optical immersion lens; said automated fluidic module is configured to maintain said predetermined level of said immersion fluid on both said optical immersion lens and said another optical immersion lens; and an additional optical immersion lens coupled to an additional immersion fluid collar, since it has been held that a mere duplication of working parts of a device involves only routine skill in the art. One would have been motivated to have another optical immersion lens and another fluid delivery line configured to dispense said immersion fluid onto said another optical immersion lens; said automated fluidic module is configured to maintain said predetermined level of said immersion fluid on both said optical immersion lens and said another optical immersion lens; and an additional optical immersion lens coupled to an additional immersion fluid collar, to allow each of the different magnification microscope objectives to also be operable using an immersion fluid, thus allowing each of the different magnification microscope objectives to operate with increased numeral apertures, thus increasing the light collection efficiencies of these microscope objectives. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Claim(s) 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimada in view of Yoshida (JP 2010-098172 A, English translation attached to reference).
Shimada discloses the invention as set forth above, except for substantially no bubbles are introduced to said immersion fluid in said fluid delivery line. However, Yoshida teaches a conventional exposure apparatus (See for example Abstract; Figures 1-14) that utilizes an immersion objective (See for example 4, final lens in 4, Figure 13; Page 12, Paragraphs 6-7) for imaging. In particular, Yoshida teaches the use of a de-aeration device and/or a de-gassing device (See for example Page 13, Paragraphs 7-8) to eliminate or suppress the generation of bubbles and to remove dissolved gases in the immersion fluid. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for substantially no bubbles to be introduced to said immersion fluid in said fluid delivery line, as taught by Yoshida, in the device and method of Shimada, to prevent imaging artifacts from being generated due to the unwanted presence of bubbles in the field of view of the immersion objective.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARNEL C LAVARIAS whose telephone number is (571)272-2315. The examiner can normally be reached M-F 10:30 AM-7 PM.
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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.
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ARNEL C. LAVARIAS
Primary Examiner
Group Art Unit 2872
11/25/2025
/ARNEL C LAVARIAS/Primary Examiner, Art Unit 2872