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Claims 1-5, 7-10, and 12-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected image based particle sorting system, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/072026.
Applicant's election with traverse of Group 2: Claim 28-34 in the reply filed on 07/07/2026 is acknowledged. The traversal is on the ground(s) that original claims 1 and 28 recite special technical feature(s) not in the cited reference "Diebold". Applicant recites that the Diebold reference does not read on “obtaining image data of the individual particles”. This is not found persuasive because the Diebold reference does recite that one aspect of the method can contain image data that would allow generating a pixel-by-pixel fluorescence intensity map (para 0025).
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 33 is objected to under 37 CFR 1.75(c) as being in improper form because it depends on claim 32 which has been canceled. Accordingly, the claim 33 have been examined as being dependent upon claim 28.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 is: “data processing system is in communication with a remote computing device to receive a programmable command to adjust the sorting criteria from the client device” in claim 31.
The specification defines the ‘data processing system’ to include a personal computing device such as a desktop computer or a laptop computer (Specification, para 0039). Under the 3-prong analysis, the limitation should be interpreted under 112(f) for the following reasons:
The claim limitation uses the term ‘system’ which is a generic place holder for the term ‘means’.
The generic placeholder is modified by functional language. The functional language is ‘to receive a programmable command to adjust the sorting criteria from the client device’.
The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. See MPEP §2181(I). The term "system" is not modified by sufficient structure.
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 § 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.
Claim 31 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 31 recites the limitation "data processing system". There is no mention of a “data processing system” in any previous claims. There is insufficient antecedent basis for this limitation in the claim. Claim 31 further recites the limitation "client device". There is no mention of a “client device” in any previous claims. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 28-31 and 33-34 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claim 28 recites the steps sorting particle. Thus, the claim is a method, which is one the statutory categories of invention. Claim 27-31 and 33-34 also are dependent on Claim 28.
Step 2A Prong One: Claim 28 recite a judicial exception and identify the abstract idea/law of nature/natural phenomenon. Claim 1 recites “processing the obtained image data”. The "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions (See MPEP 2106(a)(2)(III)). Processing the obtained image data could include using the human mind to make observations about the image data which is a mental evaluation. Thus, the processing step would fall under the abstract idea groups of mental processes. (Step 2A -Prong 1: Yes).
Step 2A Prong Two: The judicial exception is not integrated into a practical application because the claims do not impose any meaningful limits on practicing the abstract idea. Claim 28 describes processing the image data to determine properties of individual particles without any practical limitations. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. (Step 2A -Prong 2: No)
Step 2B: Claims 28 does not have any steps or feature which are significantly more and the steps are well known in the art as taught in the prior art below. Claim 28 is ineligible. Claims 29-31 and 33-34 do not appear to have ‘significantly’ more. Claim 29 adds the additional element of analyzing the determined properties to produce a sorting decision which is recited in a high level of generality. Claims 30 and 31 adds parameters for the sorting criterion which a well-known in the art as taught in the prior art below. Claim 33 recites a parameter for the Bessel-Gaussian beam which does not add any practical limitation. Claim 34 recites further step removing side lobe energy the image data for analysis in a high level of generality. Since it is claimed at a high level of generality, there are no meaningful limitation claimed, such as a particular or unconventional machine or transformation of a particular article. (Step 2B: No)
Thus, claim 28 is ineligible. Claims 29-31 and 33-34 are dependent on Claim 28, and are also rejected.
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.
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.
Claims 28, 29, 30, 31, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Lo et al. (WO 2020056422 A1), and further in view of non-patent literature "Bessel Beam: Significance and Applications—A Progressive Review" by Khonina et al.
Regarding claim 28, Lo teaches a method for sorting particles (para 0007), comprising:
modifying a shape of an excitation laser beam generated by a laser light source to produce a shape-modified excitation beam (para 0039 and 0043);
directing the shape-modified excitation beam at a channel of a particle flow device (para 0039);
obtaining image data of individual particles flowing in a carrier fluid along the channel of the particle flow device by scanning the shape-modified excitation beam directed at the channel (para 0016, 0039, and 0043);
processing the obtained image data to determine one or more properties associated with the individual particles flowing in the carrier fluid (para 0006);
producing a control command based on a comparison of the determined one or more properties with a sorting criteria, wherein the control command is produced in real time during the flowing of the individual particles in the channel (para 0006 and 0032);
and sorting the individual particles based on the control command into one of a plurality of output directions branching from an input direction of the individual particles (para 0006).
However, Lo does not teach the shape-modified excitation beam is a Bessel-Gaussian beam.
Khonina teaches different types of diffraction and non-diffraction beams that are used for things such as particle trapping and particles handling applications as well as ultrasound imaging systems (pg 2, Sections: Introduction). Khonina teaches a shape-modified excitation beam is a Bessel-Gaussian beam which can be used for the benefit of mitigating the turbulence effect on any optical vortex (pg 9, Section: Free-Space Long-Distance Self-Healing BBs). Thus, it would be obvious to one of ordinary skill in the art before the effective filing date to modify Lo with a Bessel-Gaussian beam as taught by Khonina for mitigating the turbulence effect on any optical vortex (pg 9, Section: Free-Space Long-Distance Self-Healing BBs).
Regarding claim 29, Lo in view of Khonina teaches the invention of claim 28. Lo further teaches analyzing, in real time during the flowing of the individual particles in the channel, the determined one or more properties to produce a sorting decision based on one or more attributes of the individual particles ascertained from the image data, wherein the produced control command is indicative of the sorting decision (para 0073).
Regarding claim 30, Lo in view of Khonina teaches the invention of claim 28. Lo further teaches the sorting criteria includes one or more threshold properties of a particle corresponding to one or more of (i) an amount and/or a size of a sub-feature of or on an individual particle; (ii) an amount and/or size of the individual particle itself; (iii) a morphology characteristic of the sub-feature of the individual particle; or (iv) a morphological characteristic of the individual particle itself (para 0069).
Regarding claim 31, Lo in view of Khonina teaches the invention of claim 30. Lo further teaches the sorting criteria is predetermined, and wherein the data processing system is in communication with a remote computing device to receive a programmable command to adjust the sorting criteria from the client device (para 0032, 0034 and 0070).
Regarding claim 33, Lo in view of Khonina teaches the invention of claim 28.
Lo does not teach the Bessel-Gaussian beam improves a focal depth of the individual particles in the obtained image data by 80% to 95% with respect to a Gaussian excitation laser beam.
Khonina teaches the benefits of the extended depth of focus imaging based on Bessel beams in the field of microscopy and life sciences for the benefit of easy incorporation into pre-existing systems (pg 4, Section: Introduction). Khonina further teaches that for trapping microparticles requires tighter focusing outcomes that can’t be solved using Gaussian optics (pg 5, Section: Optical Trapping with BBs). Although Khonina reference does not teach the specific percentage of improvement of focal depth of the individual particle using a Bessel-Gaussian beam to a Gaussian beam, it is not inventive to discover the percentage of improvement between different beams that are taught by the prior art. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP § 2144.05(II)(A). Thus, it would be obvious to one of ordinary skill in the art before the effective filing date to modify Lo to determine that the Bessel-Gaussian beam improves a focal depth of the individual particles in the obtained image data by 80% to 95% with respect to a Gaussian excitation laser beam as taught by Khonina for the benefit of better detection sensitivity.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Lo et al. (WO 2020056422 A1) in view of non-patent literature "Bessel Beam: Significance and Applications—A Progressive Review" by Khonina et al. as applied to claim 28 above, and further in view of Trainer (US 20200309663 A1).
Regarding claim 34, Lo in view of Khonina teaches the invention of claim 28.
Khonina further teaches the growth of side lobe energy that worsen the image properties which can be removed by filter (pg 3, Section: Introduction) for better sensitivity. Thus, it would be obvious for one of ordinary skill in the art before the effective filing date to modify Lo with removing side lobe energy as taught by Khonina for better sensitivity.
Lo in view of Khonina does not teach removing side lobe energy in the image data by receiving or formatting the image data in an image data set that comprises a plurality of two-dimensional (2D) scanned image slices; producing a deconvolution function based on a magnitude of at least one side lobe in a Bessel-Gaussian function; and producing a data set corresponding to the individual particle with side lobe energy removed by applying the deconvolution function to the plurality of 2D scanned image slices.
Trainer teaches an apparatus utilizing multiple detectors to measure properties related to light scattered by particles (Abstract). Trainer teaches removing side lobe energy in the image data by receiving (para 0327) or formatting the image data in an image data set that comprises a plurality of two-dimensional (2D) scanned image slices (para 0470); producing a deconvolution function based on a magnitude of at least one side lobe in a Gaussian function (para 0205 and 0208); and producing a data set corresponding to the individual particle with side lobe energy removed by applying the deconvolution function to the plurality of 2D scanned image slices (para 0156 and 0312) for the benefit of higher resolution (para 0312). Thus, it would be obvious to one of ordinary skill in the art before the effective filing date to modify Lo in view of Khonina with removing side lobe energy in the image data by receiving or formatting the image data in an image data set that comprises a plurality of two-dimensional (2D) scanned image slices; producing a deconvolution function based on a magnitude of at least one side lobe in a Bessel-Gaussian function; and producing a data set corresponding to the individual particle with side lobe energy removed by applying the deconvolution function to the plurality of 2D scanned image slices as taught by Trainer for the benefit of higher resolution (para 0312).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENA BERA whose telephone number is (571)272-9964. The examiner can normally be reached Mon-Fri 8:00-5:00pm EST.
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, Charles Capozzi can be reached at (571) 270-3638. 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.
/H.R.B./Examiner, Art Unit 1798
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
Prosecution Insights