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 .
Amendment
1- The amendment filed on 4/21/2022 has been entered and fully considered. Claims 1,14-18 remain pending in the application, where the independent claims have been amended. New claims 21-32 have been added.
Response to Arguments
2- Moreover, Applicant’s amendments and their corresponding arguments, with respect to the rejection of the pending claims under 35 USC 102 and 103 have been fully considered and are persuasive.
3- Therefore, the rejection, as set forth in the non-final office action mailed on 10/29/2025, are withdrawn.
4- However, upon further consideration, a new ground of rejection is made over the prior art previously used in view of Modlin et al. (PGPUB 20040239922), hereinafter Modlin2, and in view of Keating et al. (KR 102316452) for the new claims 21-22 and 28-32.
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, 14-17, 23-27 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Modlin et al. (PGPUB No. 20010003044) in view of Modlin et al. (PGPUB 20040239922), hereinafter Modlin2.
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, 23/26, 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) wherein the excitation having a set of modulation frequencies (¶ 31-34, 63, 104, 125, 134, 138 for ex; the multiplicity of different modulation frequencies between 200 Hz to 200 MHz); and at least one light detector (58 or any of 145i with 136/142, 274/276 or equivalents) receiving time-resolved fluorescence emission light from a spectral band of at least one compound and generating analog signals (Abstract, ¶ 7-8, 16-17, 29-34, 86, 121-127, 134, 142),
Modlin does not teach expressly the system comprising: a clock generating a clock signal; a programmable logic receiving the clock signal and executing light source control logic, to generate at least one digital modulation signal having a pulse train based on the lock signal; a digital-pulse intensity modulated light source generating an excitation based on the digital modulation signal; at least one analog to digital converter receiving the analog signals from the light detector and generating digitized forms of the fluorescence emission light; and wherein the programmable logic receives and processes the digitized fluorescence emission signal; (claim 23) wherein the at least one digital modulation signal is a first digital modulation signal, the excitation is a first excitation, and the pulse train is a first pulse train, and the at least one digital modulation signal further comprising a second digital modulation signal based on the clock signal, the second digital modulation signal having a second pulse train, and further comprising a second digital-pulse intensity modulated light source generating a second excitation based on the second digital modulation signal and having a second set of modulation frequencies different from and not harmonically related to the first set of modulation frequencies; (claim 26) wherein the first digital modulation signal and at least a second digital modulation signal are each generated in the programmable logic.
However, Modlin’s computer (¶ 112) and using laser pulses (¶ 31, 63, 100-102) necessitates the use of timing means to generate the pulsing of the light, and a clock generating a clock signal with a programmable logic receiving the clock signal and executing light source control logic are necessary for Modlin’s system to generate at least one digital modulation signal having a pulse train based on the lock signal and a pulse intensity modulated light source generating an excitation based on the digital modulation signal. As to claims 23/26, Modlin teaches using more than one modulating frequency (¶ 112, 137 for ex.)
Moreover, Modlin2, in the same field of endeavor, teaches a light detection system (Abstract, Figs. 1-20) where it is disclosed using a clock for clocking the light source (¶ 163 for ex.) Digital pulse intensities appear to be obvious to one PHOSITA given the teachings of Modlin2 of digital light intensity processing and detection (¶ 162-163 200, 203, 238 for ex.); the system comprising at least one analog to digital converter receiving the analog signals from the light detector and generating digitized forms of the fluorescence emission light (¶ 137, 148, 200); and wherein the programmable logic receives and processes the digitized fluorescence emission signal (¶ 137 for ex.).
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 Modlin2’s suggestions so that the system comprising: a clock generating a clock signal; a programmable logic receiving the clock signal and executing light source control logic, to generate at least one digital modulation signal having a pulse train based on the lock signal; a digital-pulse intensity modulated light source generating an excitation based on the digital modulation signal; at least one analog to digital converter receiving the analog signals from the light detector and generating digitized forms of the fluorescence emission light; and wherein the programmable logic receives and processes the digitized fluorescence emission signal; wherein the at least one digital modulation signal is a first digital modulation signal, the excitation is a first excitation, and the pulse train is a first pulse train, and the at least one digital modulation signal further comprising a second digital modulation signal based on the clock signal, the second digital modulation signal having a second pulse train, and further comprising a second digital-pulse intensity modulated light source generating a second excitation based on the second digital modulation signal and having a second set of modulation frequencies different from and not harmonically related to the first set of modulation frequencies; wherein the first digital modulation signal and at least a second digital modulation signal are each generated in the programmable logic, with the advantage of effectively optimizing the measurements of the compound composition and match the spectral and temporal dynamics thereof.
Moreover, Modlin teaches/suggests:
(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)
(Claim 17) wherein the FLIM is a handheld device (¶ 73).
(claim 24) wherein the digital-pulse modulated light source is either a continuous wave (CW) or a pulsed light source; (claim 25) wherein the continuous wave (CW) light source is a diode laser (¶ 61-64 for ex.)
(claim 27) wherein the at least one light detector is a first light detector, and further comprising a second light detector, the first light detector receiving a first emission band of the fluorescence emission light, and a second light detector receiving a second emission band of the fluorescence emission light, and generating analog signals indicative of the multispectral time-resolved fluorescence light, the first emission band and the second emission band being different spectral bands (¶ 58, 71, 85-86, 104, multispectral fluorescence/luminescence measured using one more detectors).
7- Claim 18 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Modlin and Modlin2 in view of Tearney et al. (US Patent 9557154), and further in view of Ben Yakar (PGPUB No. 20210161385)
As to claim 18, the combination of Modlin and Modlin2 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)..
The combination does not teach expressly the pair mirrors to be galvanometric; and the probe comprises one or more optical lenses which form an endoscopic optical system.
However, in a similar field of endeavor, Tearney teaches a lens based 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.).
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; and the probe comprises one or more optical lenses which form an endoscopic optical system, with the advantage of effectively optimizing the optical characterization measurements.
8- Claims 21-22, 28-32 are s rejected under AIA 35 U.S.C. 103 as being unpatentable over Modlin and Modlin2 in view of Keating et al. (KR 102316452)
As to claims 21-22, the combination of Modlin and Modlin2 teaches the FD-TRF measuring system of claim 1.
The combination does not teach expressly wherein the programmable logic uses the clock signal to provide synchronization of the light source control logic to simultaneously generate a digital modulation signal based on the clock signal, with at least one analog to digital converter; (claim 22) wherein the at least one analog to digital converter has a sampling clock and the sampling clock is the clock generating the clock signal.
However, in a similar field of endeavor, Keating teaches a system and method for monitoring fluorescent tracking agents (Abstract, Figs. 1-29), wherein the programmable logic uses the clock signal to provide synchronization of the light source control logic to simultaneously generate a digital modulation signal based on the clock signal, with at least one analog to digital converter; wherein the at least one analog to digital converter has a sampling clock and the sampling clock is the clock generating the clock signal (¶ 116, 122, 125-126, 128, 131for ex.).
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 Keating so that the programmable logic uses the clock signal to provide synchronization of the light source control logic to simultaneously generate a digital modulation signal based on the clock signal, with at least one analog to digital converter; wherein the at least one analog to digital converter has a sampling clock and the sampling clock is the clock generating the clock signal, with the advantage of effectively controlling and optimizing the optical characterization measurements.
As to claim 28, the combination of Modlin and Modlin2 in view of Keating teaches a multispectral detection, frequency-domain time-resolved fluorescence -FD-TRF- measuring system, comprising: a clock generating a clock signal; a programmable logic receiving the clock signal and executing light source control logic, to simultaneously generate a digital modulation signal based on the clock signal, the digital modulation signal having a pulse train; at least one digital-pulse modulated light source generating an excitation based on the digital modulation signal having a set of modulation frequencies; and at least one light detector receiving time-resolved fluorescence emission light from a spectral band of at least one compound excited by the excitation; at least one analog to digital converter receiving the analog signals and generating a digitized fluorescence emission signal; and wherein the programmable logic uses the clock signal to provide synchronization of the light source control logic to simultaneously generate the digital modulation signal based on the clock signal, and the at least one analog to digital converter (see rejection of claims 1, 21-22).
Moreover, Modlin teaches/suggests:
(Claims 29/30) wherein the digital-pulse modulated light source is a continuous wave (CW) light source or a pulsed light source; wherein the continuous wave (CW) light source is a diode laser (¶ 61-64 for ex.)
(Claim 31) wherein the at least one light detector is a first light detector, and further comprising a second light detector, the first light detector receiving a first emission band of the fluorescence emission light, and a second light detector receiving a second emission band of the fluorescence emission light, and generating analog signals indicative of the multispectral time-resolved fluorescence light, the first emission band and the second emission band being different spectral bands (¶ 58, 71, 85-86, 104, multispectral fluorescence/luminescence measured using one more detectors).
(Claim 32) wherein the at least one digital modulation signal is a first digital modulation signal based on the clock signal, the excitation is a first excitation, and the pulse train is a first pulse train, and the at least one digital modulation signal further comprising a second digital modulation signal based on the clock signal, the second digital modulation signal having a second pulse train, and further comprising a second digital-pulse intensity modulated light source generating a second excitation based on the second digital modulation signal and having a second set of modulation frequencies different from and not harmonically related to the first set of modulation frequencies (see the rejection of claim 23).
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).
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.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED 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
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