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 .
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: optical adjustment component in claims 55-57 (note that claims 58-62 contain sufficient structure – beam splitter and wedged beam splitter).
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 Objections
Claim 62 is objected to because of the following informalities: “predetermind” appears to be a typo, where “predetermined” is intended. Appropriate correction is required.
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 62 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 62 recites the limitation "the beam splitter" in line 2. There is insufficient antecedent basis for this limitation in the claim. It’s unclear whether “the beam splitter” is a newly recited beam splitter or if it refers to one of the beam splitters in the above claims that are no longer parent claims after the latest amendment of 5/07/2024. This lack of clarity causes the scope of the claim to be indefinite. For the sake of examination, it will be interpreted as “a beam splitter.”
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 51-59 and 62-67 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-18 of U.S. Patent No. 11592386 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the subject matter claimed in these claims of the present application is also claimed in U.S. Patent No. 11592386 B2, which is by the same inventor. Specifically, the claim correspondence is as follows:
Present Application claims
U.S. Patent No. 11592386 B2 claims
51
1
52
1
53
1 and 12
54
13
55
14
56
15
57
16
58
17
59
18
62
Implicit in the beam splitter of claim 17
63
1
64
1, 15, and 17
65
1
66
12
67
18
Claims 51-59 and 62-67 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12, 14-23 of U.S. Patent No. 11965814 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the subject matter claimed in these claims of the present application is also claimed in U.S. Patent No. 11592386 B2, which is by the same inventor. Specifically, the claim correspondence is as follows:
Present Application claims
U.S. Patent No. 11965814 B2 claims
51
1
52
15
53
14-15
54
16-17
55
18
56
19
57
20
58
21
59
22
62
23
63
1
64
1, 19, and 21
65
12
66
22
67
18
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.
(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 51 is rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Ferrante (US 6320656 B1).
Regarding claim 51, Ferrante teaches a light detection system comprising an unfiltered light scatter detector configured to detect scattered light from a sample in a flow stream irradiated by a laser (claim 1 and figures 2-3). Furthermore, the detector is configured to detect scattered light when irradiated by two or more lasers because it detects light scattered from the direction of the sample, and this detection the same regardless of the whether one or two lasers are used to irradiate the sample.
Note: The claim is additionally rejected under 103 (below) using a reference that explicitly uses a system with two or more lasers.
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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.
Claims 51, 54-58, and 62-63 are rejected under 35 U.S.C. 103 as being unpatentable over Chandler (US 20190204207 A1; cited by Applicant) in view of Some (US 20130308121 A1).
Regarding claim 51, Chandler teaches a light detection system comprising a light scatter detector (150 ; paragraphs 36 and 54) configured to detect scattered light from a sample in a flow stream (paragraph 42) irradiated by two or more lasers (110, 130).
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Chandler doesn’t explicitly teach the light scatter detector is unfiltered.
Like Chandler (and like Applicant), Some is directed to optical scattering detection systems and teaches that the keeping the filters in the light path of some of the detectors, while removing the filter in the light path of other detectors allows one to measure fluorescence, scattering, and absorbance simultaneously (paragraph 33).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination by having one of the light scatter detectors be unfiltered in order to allow one to measure fluorescence, scattering, and absorbance simultaneously while having as simplified detection arm, by having one fewer filter.
Regarding claim 54, Chandler teaches a filtered light scatter detector configured to detect light scattered by the sample from one of the two or more lasers (paragraphs 52-53).
Regarding claim 55, Chandler teaches the filtered light scatter detector comprises: a light scatter detector (152); and an optical adjustment component (140 and filters in paragraph 53) that is configured to convey light scattered by the sample from the one laser to the light scatter detector (see figures).
Regarding claim 57, Chandler teaches the light detection system comprises an optical adjustment component (140) configured to convey scattered light from the sample to the unfiltered light scatter detector and to the filtered light scatter detector (figure 3).
Regarding claim 58, Chandler teaches the optical adjustment component comprises a beam splitter (140; as explained in paragraph 39, the reflective surface 140 is an optical component configured to split light to propagate along two different optical paths thus meeting the definition of beam splitter as well as the definition provided in Applicant’s specification, page 14, last paragraph).
Regarding claim 62, in the above combination the beam splitter (140) is configured to convey a first predetermined amount of the scattered light from the sample to the unfiltered light scatter detector and a second predetermined amount of the scattered light from the sample to the filtered light scatter detector (paragraph 39).
Regarding claim 63, in the above combination the unfiltered light scatter detector is configured to generate one or more data signals (the electrical signal the corresponds to the detected intensity of light) in response to scattered light from each of the two or more lasers.
Claims 52-53 are rejected under 35 U.S.C. 103 as being unpatentable over Chandler and Some as applied to claim 51 above, and further in view of Rowlen (US 20120070818 A1).
Regarding claims 52-53, Chandler doesn’t explicitly teach the unfiltered light scatter detector is configured to detect forward scattered light from the sample (claim 52); the unfiltered light scatter detector is configured to detect forward scattered light from a sample in a flow stream irradiated by four or more lasers (claim 53).
Like Chandler (and like Applicant), Rowlen is directed to optical particle measurements and flow cytometers and teaches having four or more lasers and measuring forward scattering (in addition to side scattering and fluorescence) provides the benefit of revealing a large amount of information and providing research capabilities (paragraph 3).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the unfiltered light scatter detector is configured to detect forward scattered light from the sample; the unfiltered light scatter detector is configured to detect forward scattered light from a sample in a flow stream irradiated by four or more lasers – in order to reveal a large amount of information about the sample and provide research capabilities.
Claim 56 is rejected under 35 U.S.C. 103 as being unpatentable over Chandler and Some as applied to claim 55 above, and further in view of Ortyn (US 20090190822 A1; cited by Applicant).
Regarding claim 56, Chandler teaches the optical adjustment component comprises a filter (paragraph 53).
Chandler doesn’t explicitly describe the filter as a bandpass filter.
However, Chandler does teach that filters can be used to ensure that fluorescent emissions at desired wavelengths are received by the detector (paragraphs 52-53). Additionally, like Chandler (and like Applicant), Ortyn is directed to optical particle measurement system and to a flow cytometer and teaches the filters being bandpass filters (paragraph 90). Additionally, Ortyn teaches this provides the benefit of being able to choose the optical characteristics of the bandpass filter to optimize the desired passbands and spectral resolution (paragraph 90).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the filter be a bandpass filter in order to ensure that only wavelengths in the desired band (such as around the fluorescent emission wavelength that one wants that detector to measure) reach the corresponding detector and thus achieve a high signal-to-noise ratio and in order to optimize the desired passbands and spectral resolution.
Claims 59-61 are rejected under 35 U.S.C. 103 as being unpatentable over Chandler and Some as applied to claim 58 above, and further in view of Gontin (US 5844685 A).
Regarding claims 59-61, Chandler doesn’t explicitly teach the optical adjustment component comprises a wedged beam splitter (claim 59); the wedged beam splitter comprises a wedge angle of from 5 arc minute to 120 arc minute (claim 60); the wedged beam splitter comprises a wedge angle of from 10 arc minute to 60 arc minute (claim 61).
Like Chandler (and like Applicant), Gontin is directed to an optical measurement system and is concerned with the problem of splitting a beam and teaches the optical adjustment component comprises a wedged beam splitter ; the wedged beam splitter comprises a wedge angle of from 5 arc minute to 120 arc minute; the wedged beam splitter comprises a wedge angle of from 10 arc minute to 60 arc minute (column 30, lines 40-45; 0.5 degrees corresponds to 30 arc minutes). Additionally, Gontin teaches this provides the benefits of reducing unwanted reflections and interference (column 30, lines 40-45).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the optical adjustment component comprises a wedged beam splitter with a wedge angle of from 10 arc minute to 60 arc minute in order to reduce unwanted interference reflections and interference.
Claims 64-65 and 70 are rejected under 35 U.S.C. 103 as being unpatentable over Chandler in view of Ortyn.
Regarding claim 64, Chandler teaches a system comprising
two light scatter detectors (150 and 152);
a bandpass filter (paragraph 53); and a beamsplitter.
Chandler doesn’t explicitly describe the filter as a bandpass filter.
However, Chandler does teach that filters can be used to ensure that fluorescent emissions at desired wavelengths are received by the detector (paragraphs 52-53). Additionally, like Chandler (and like Applicant), Ortyn is directed to optical particle measurement system and to a flow cytometer and teaches the filters being bandpass filters (paragraph 90). Additionally, Ortyn teaches this provides the benefit of being able to choose the optical characteristics of the bandpass filter to optimize the desired passbands and spectral resolution (paragraph 90).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the filter be a bandpass filter in order to ensure that only wavelengths in the desired band (such as around the fluorescent emission wavelength that one wants that detector to measure) reach the corresponding detector and thus achieve a high signal-to-noise ratio and in order to optimize the desired passbands and spectral resolution.
Regarding claim 65, Chandler teaches a light source comprising two or more lasers (110 and 330).
Regarding claim 70, Chandler teaches a mount (paragraphs 65 and 71; figure 5).
Claim 66 is rejected under 35 U.S.C. 103 as being unpatentable over Chandler and Ortyn as applied to claim 64 above, and further in view of Rowlen.
Regarding claim 66, Chandler doesn’t explicitly teach the light source comprises four or more lasers.
Like Chandler (and like Applicant), Rowlen is directed to optical particle measurements and flow cytometers and teaches the light source comprises four or more lasers provides the benefit of revealing a large amount of information and providing research capabilities (paragraph 3).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the light source comprises four or more lasers in order to reveal a large amount of information about the sample and provide research capabilities.
Claims 67-69 are rejected under 35 U.S.C. 103 as being unpatentable over Chandler and Ortyn as applied to claim 64 above, and further in view of Gontin (US 5844685 A).
Regarding claims 67-69, Chandler doesn’t explicitly teach the optical adjustment component comprises a wedged beam splitter (claim 67); the wedged beam splitter comprises a wedge angle of from 5 arc minute to 120 arc minute (claim 68); the wedged beam splitter comprises a wedge angle of from 10 arc minute to 60 arc minute (claim 69).
Like Chandler (and like Applicant), Gontin is directed to an optical measurement system and is concerned with the problem of splitting a beam and teaches the optical adjustment component comprises a wedged beam splitter ; the wedged beam splitter comprises a wedge angle of from 5 arc minute to 120 arc minute; the wedged beam splitter comprises a wedge angle of from 10 arc minute to 60 arc minute (column 30, lines 40-45; 0.5 degrees corresponds to 30 arc minutes). Additionally, Gontin teaches this provides the benefits of reducing unwanted reflections and interference (column 30, lines 40-45).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the optical adjustment component comprises a wedged beam splitter with a wedge angle of from 10 arc minute to 60 arc minute in order to reduce unwanted interference reflections and interference.
Additional Prior Art
US 20170059469 A1 reads, “The detector may be, for example, a spectrometer or a photodetector with or without an optical filter. Where used, a filter can be put at the light source and/or at the detector. (paragraph 79) and “. As illustrated in the variant waveguide array sensor system 840 of FIG. 8d, one or both of the optical source(s) one and optical detector(s) 5 may be replaced by a plurality of sources/detectors rather than multiplexed.” (paragraph 74) laser (paragraph 72) “absorption or scattering “ in abstract and claims
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US 20030223063 A1 reads, “0060] In another embodiment of this technique, the two (different wavelength) pulsed lasers can be triggered to fire at slightly different times, and two synchronized multielement detectors 190 (only one shown in FIG. 1) may be used for detection, one gated to be open during the period of the first laser firing, and the other to be gated to be open during the period of the second laser firing. In this way, one multielement detector 190 senses the angular scattering pattern at one wavelength and the second multielement detector senses the angular pattern at the other wavelength, without the need for interference filters”
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WO 2010124347 A1 reads, “An alternative (or complimentary) embodiment of this aspect of the invention will now be described. In this embodiment the system is adapted to enable the receiver to avoid saturation without the use of a filter, although filters could be used with this embodiment if necessary.”
US 20070258086 A1 reads, “[0040] Accordingly, FIG. 3 shows an inspection device 1 comprising an adaptive filter 5 provided in the optical channel 13 of the optical system 11 for transmitting a filtered radiation beam 10. The optical system 11 comprises the further optical channel 12 that comprises a further detector 7'. The further detector 7' detects the scattered radiation beam 10 in an unfiltered condition. T
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUFUS L PHILLIPS whose telephone number is (571)270-7021. The examiner can normally be reached M-Th, 2 -10 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached at (571) 270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUFUS L PHILLIPS/ Examiner, Art Unit 2877