DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
1- This office action is a response to an application filed on 3/20/2024, in which claims 1-20 are currently pending. The Application claims Priority from Provisional Application 63491197 , filed 03/20/2023.
Information Disclosure Statement
2- The submitted information disclosure statement(s) (IDS) is(are) in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is(are) being considered by the examiner.
Specification
3- The 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 application may become aware in the specification.
Drawings
4- The drawings were received on 3/20/2024. These drawings are acceptable.
Claim Rejections - 35 USC § 103
5- 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
6- Claims 1-17 and 19-20 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Modlin et al. (PGPUB No. 20010003044)
In addition, the functional recitation in the claims (e.g. "configured to" or "adapted to" or the like) that does not limit a claim limitation to a particular structure does not limit the scope of the claim. It has been held that the recitation that an element is "adapted to", "configured to", "designed to", or "operable to" perform a function is not a positive limitation but only requires the ability to so perform and may not constitute a limitation in a patentable sense. In re Hutchinson, 69 USPQ 139. (See MPEP 2111.04); see also In In re Giannelli, 739 F.3d 1375, 1378, 109 USPQ2d 1333, 1336 (Fed. Cir. 2014).
Also, it should be noted that it has been held that a recitation with respect to the manner in which a claimed device is intended to be employed does not differentiate the claimed device from a prior art apparatus satisfying the claimed structural limitations Ex-parte Masham 2 USPQ2d 1647 1987).
The claimed system in the instant application is capable of performing the claimed functionality, as is the prior art used in the present office action. The Examiner notes that where the patent office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart and sfiligoj, 169 USPQ 226 (C.C.P.A. 1971).
As to claims 1-20, Modlin teaches a multispectral frequency-domain time-resolved fluorescence FD-TRF measuring system, and its method of making/using (Abstract and Figs. 1-17), comprising: at least one frequency-modulated FM continuous wave CW digital-pulse modulated diode laser configured for simultaneous multiwavelength excitation of at least one compound (¶ 31-34, 63, 104, 125, 134, 138 for ex.; light source 52 or 103b-c-d/106/108, 272 or equivalent used to analyze sample 120, 262 or equivalents); and at least one light emission detector (58 or any of 145i with 136/142, 274/276 or equivalents) configured for simultaneous multispectral time-resolved fluorescence measurement of a fluorescence frequency response FFR of the at least one compound (Abstract, ¶ 7-8, 15-17, 22, 31-34, 61, 65-66, 121-127, 134),
wherein the excitation is modulated at frequencies within a frequency range of less than 100 MHz (¶ 34; the multiplicity of different modulation frequencies between 200 Hz to 200 MHz engulfs the claimed frequencies); (Claim 19) and analyzing the FFR received from the biological sample (¶ 57, 114, 135, 153).
Modlin does not teach expressly wherein the at least one diode laser is configured to emit modulated excitation spanning a set of frequencies which comprises at least three different frequencies in a range between 1 to 99 MHz, the set comprising at least one frequency < 50 MHz, and at least one frequency ≥ 50 MHz and < 100 MHz; (claim 2) wherein the set of frequencies comprises 3 to 10 different frequencies; (claim 3) wherein the set of frequencies comprises 3 to 5 different frequencies; (claim 4) wherein each frequency in the set of frequencies is separated by at least 10 MHz; (claim 5), wherein each frequency in the set of frequencies is separated by at least 5 MHz; (claim 6) wherein the set of frequencies comprises at least two frequencies < 50 MHz, and at least one frequency ≥ 50 MHz and < 100 MHz; (claim 7)
wherein the set of frequencies comprises at least one frequency < 50 MHz, and at least two frequencies ≥ 50 MHz and < 100 MHz; (claim 8) wherein the set of frequencies comprises at least two frequencies < 50 MHz, and at least two frequencies ≥ 50 MHz and < 100 MHz;
(claim 9) wherein the set of frequencies comprises three different frequencies, the set comprising one frequency < 50 MHz, and two frequencies ≥ 50 MHz and < 100 MHz; (claim 10) wherein the set of frequencies comprises four different frequencies, the set comprising two frequencies < 50 MHz, and two frequencies ≥ 50 MHz and < 100 MHz; (claim 11) wherein the set of frequencies comprises at least one frequency < 40 MHz, at least one frequency ≥ 40 MHz and < 70 MHz, and at least one frequency ≥ 70 MHz and < 100 MHz; (claim 12) wherein the set of frequencies comprises at least one frequency < 30 MHz, at least one frequency ≥ 30 MHz and < 50 MHz, at least one frequency ≥ 51 MHz and <75 MHz, and at least one frequency ≥ 76 MHz and < 100 MHz; (claim 13) wherein the set of frequencies comprises three to five different frequencies, the set comprising at least one frequency < 40 MHz, at least one frequency ≥ 40 MHz and < 70 MHz, and at least one frequency ≥ 70 MHz and < 100 MHz.
However, Modlin does disclose, in ¶ 34, that a multiplicity of different modulation frequencies between 200 Hz to 200 MHz is used which engulfs the claimed frequencies, and since no specific detail is claimed about the three frequencies, i.e. whether they are used at once, or successively, or else. In the case where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (In re Wetheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)). Also, one PHOSITA would find it obvious to set the numbers and the values of those arbitrary frequencies and frequency ranges to match the possible different temporal and spectral dynamics of the components of the compound/sample, and since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233; See also MPEP § 2143 Sect. I. B-D.
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus/method of Modlin in view of its suggestions so that the at least one diode laser is configured to emit modulated excitation spanning a set of frequencies which comprises at least three different frequencies in a range between 1 to 99 MHz, the set comprising at least one frequency < 50 MHz, and at least one frequency ≥ 50 MHz and < 100 MHz; (claim 2) wherein the set of frequencies comprises 3 to 10 different frequencies; (claim 3) wherein the set of frequencies comprises 3 to 5 different frequencies; (claim 4) wherein each frequency in the set of frequencies is separated by at least 10 MHz; (claim 5), wherein each frequency in the set of frequencies is separated by at least 5 MHz; (claim 6) wherein the set of frequencies comprises at least two frequencies < 50 MHz, and at least one frequency ≥ 50 MHz and < 100 MHz; (claim 7) wherein the set of frequencies comprises at least one frequency < 50 MHz, and at least two frequencies ≥ 50 MHz and < 100 MHz; (claim 8) wherein the set of frequencies comprises at least two frequencies < 50 MHz, and at least two frequencies ≥ 50 MHz and < 100 MHz; (claim 9) wherein the set of frequencies comprises three different frequencies, the set comprising one frequency < 50 MHz, and two frequencies ≥ 50 MHz and < 100 MHz; (claim 10) wherein the set of frequencies comprises four different frequencies, the set comprising two frequencies < 50 MHz, and two frequencies ≥ 50 MHz and < 100 MHz; (claim 11) wherein the set of frequencies comprises at least one frequency < 40 MHz, at least one frequency ≥ 40 MHz and < 70 MHz, and at least one frequency ≥ 70 MHz and < 100 MHz; (claim 12) wherein the set of frequencies comprises at least one frequency < 30 MHz, at least one frequency ≥ 30 MHz and < 50 MHz, at least one frequency ≥ 51 MHz and <75 MHz, and at least one frequency ≥ 76 MHz and < 100 MHz; (claim 13) wherein the set of frequencies comprises three to five different frequencies, the set comprising at least one frequency < 40 MHz, at least one frequency ≥ 40 MHz and < 70 MHz, and at least one frequency ≥ 70 MHz and < 100 MHz, with the advantage of effectively optimizing the measurements of the compound composition and match the spectral and temporal dynamics thereof.
(Claim 14) wherein the system comprises time-resolved fluorescence spectroscopy TRFS (Abstract, ¶ 7, 17, 31, 63 for ex.)
(Claims 15-16) wherein the system comprises fluorescence lifetime imaging endoscopy; wherein the system comprises fluorescence lifetime imaging microscopy FLIM (Abstract, ¶ 7, 17, 22, 31, 63, 86 for ex. imaging and fluorescence lifetime are considered. Endoscopy and microscopy are construed as mere intended uses for the measuring system, since no specificities are claimed to limit the system to those specific uses)
(Claims 17, 20) wherein the FLIM is a handheld device (¶ 73).
7- Claim 18 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Modlin in view of Tearney et al. (US Patent 9557154), and further in view of Ben Yakar (PGPUB No. 20210161385)
As to claim 18, Modlin teaches the FD-TRF measuring system of claim 17.
Moreover, Modlin teaches expressly wherein the handheld device comprises an enclosure and a probe, and wherein the enclosure comprises a pair of rotating mirrors for scanning (¶ 103 for ex.), dichroic mirrors for combining excitation beams and separating fluorescence emission (¶ 71, 109, 159, 167 for ex.), and fiber collimators and mirrors for alignment (¶ 67-69, 106 for ex.), and the probe comprises a pair of lenses which form a relay system (¶ 57, 99, 106 relay systems).
Modlin does not teach expressly the pair mirrors to be galvanometric; the pair of relay lenses to be achromatic; and a third achromatic lens which functions as an objective lens which provides a field of view FOV.
However, in a similar field of endeavor, Tearney teaches an endoscopic probe system (Abstract, Col/ll. 2/66-67, Figs. 1-8) using dichroic mirrors and achromatic lenses as objective (Col/ll. 8/7-60). Moreover, in the same field of endeavor, Ben Yakar teaches using galvanometric mirrors (¶ 4, 194-196 for ex.) and achromatic lenses as an objective (¶ 240).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus/method of Modlin in view of suggestions from Tearney and Ben Yakar so that the pair mirrors to be galvanometric; the pair of relay lenses to be achromatic; and a third achromatic lens which functions as an objective lens which provides a field of view FOV, with the advantage of effectively optimizing the optical characterization measurements.
Conclusion
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED K AMARA whose telephone number is (571)272-7847. The examiner can normally be reached on Monday-Friday: 9:00-17:00
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached on (571-272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohamed K AMARA/
Primary Examiner, Art Unit 2877