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
Applicant's response to the last Office Action, filed on 1/29/2026 has been entered and made of record.
Response to Arguments
Applicant's arguments with respect to claims 1 and 19-21 have been considered but are moot in view of the new grounds of rejection.
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, 19-21 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.
Claim 2-18 are rejected based on their dependency and do not overcome the indefinite rejection.
The following claim elements are vague and indefinite. The Examiner suggests the Applicant review figure 10 and figure 14 of the specification and amend the claims:
“determining first characteristic information of a first tissue form in the first image;
determining whether to allow an analysis with a first parameter based on: the determined first characteristic information, and second characteristic information, corresponding to the first parameter, of a second tissue form in a second image; and
analyzing, based on the determination to allow the analysis with the first parameter, the first image based on the first parameter.”
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.
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.
Claims 1, 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Keller et al. (US 2019/0219811) in view of Mizuhara (US 10,964,508).
Regarding claim 1, Keller teaches a non-transitory computer-readable medium having stored thereon, computer-executable instructions which, when executed by a computer, cause the computer to execute operations, the operations comprising: acquiring a first image obtained by imaging a specimen tissue (see figure 15A, figure 15B, para. 0131, Keller discusses a current image of a specimen);
determining first characteristic information of a first tissue form in the first image (see figure 15A, figure 15B, para. 0131, Keller discusses image quality values of the current image of a specimen);
determining whether to allow an analysis with a first parameter based on: the determined first characteristic information, and second characteristic information, corresponding to the first parameter, of a second tissue form in a second image (see figure 15A, figure 15B, para. 0131, Keller discusses comparing the image quality values of the current image of a specimen with highest quality image).
Mizuhara teaches analyzing, based on the determination to allow the analysis with the first parameter, the first image based on the first parameter (see figure 2, Mizuhara discusses determining evaluation image without changing parameters).
Motivation to combine may be gleaned from the prior art considered. It would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to modify the invention of Keller with Mizuhara to derive at the invention of claim 1. The result would have been expected, routine, and predictable in order to perform microscope analysis.
The determination of obviousness is predicated upon the following: One skilled in the art would have been motivated to modify Keller in this manner in order to improve microscope analysis by adjusting parameters based on images. Furthermore, the prior art collectively includes each element claimed (though not all in the same reference), and one of ordinary skill in the art could have combined the elements in this manner explained using known engineering design, interface and/or programming techniques, without changing a fundamental operating principle of Keller, while the teaching of Mizuhara continues to perform the same function as originally taught prior to being combined, in order to produce the repeatable and predictable result of calculating parameter settings of microscope based on image comparisons. The Keller and Mizuhara systems perform microscope image analysis, therefore a person having ordinary skill in the art would have reasonable expectation of success in the combination yielding predictable results. It is for at least the aforementioned reasons that the examiner has reached a conclusion of obviousness with respect to the claim in question.
Claim 19 is rejected as applied to claim 1 as pertaining to a corresponding device.
Claim 20 is rejected as applied to claim 1 as pertaining to a corresponding method.
Claim 21 is rejected as applied to claim 1 as pertaining to a corresponding microscope system.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNY A CESE whose telephone number is (571) 270-1896. The examiner can normally be reached on Monday – Friday, 9am – 4pm.
If attempts to reach the primary examiner by telephone are unsuccessful, the examiner’s supervisor, Gregory Morse can be reached on (571) 272-3838. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/Kenny A Cese/
Primary Examiner, Art Unit 2663
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