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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 28, 2024 complies with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “36” has been used to designate “clearance” and a “recess” and a ”magnet” and a “leaf spring”.
The drawings are further objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character not mentioned in the description: element “42”.
The drawings are further objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “microscope stand” must be shown or the feature canceled from the claim. No new matter should be entered.
The drawings have not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any other errors of which applicant may become aware in the drawings.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the claims recite an “annular base”, a “repositioning element” and a “pin”, which are terms that do not appear in the description of the invention. For purposes of examination the examiner interprets that the “annular base” is the mount (14) with the retaining collar (16) projecting from it as seen in figure 1; and the “repositioning element” is the resetting device discussed on page 12 line 16-page 13 line 16 as a combination of stop (29), reset plunger (33) and spring (34) as seen in figure 6; and the “pin” is reset plunger (33) as seen in figure 6. But this may not be the case, and is not a unique interpretation. The examiner respectfully suggests amending the claims to match the terminology used in in the description of the invention of the specification so as to fix this problem without raising any issues of support for the amendments.
The disclosure is further objected to because of the following informalities: changing terminologies and/or different reference numbers for the same term.
The reference number 14 is associated with the terms “mount” and “receptacle”
The term “securing projection” is associated with reference numbers 25 and 26, and the term “securing cam” is also associated with reference number 25 – either possibly using the wrong reference number with the correct term or using correct reference number with the wrong term.
The reference number 30 is associated with the terms “rotation stop” (in the form of a bolt) and “pin”
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.
Claims 1-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1 it is unclear if a “microscope objective” and/or a “microscope component” are required elements or intended usages for the claimed apparatus for attaching. The scope set forth in the specification clearly sets forth that the invention is for the apparatus for attaching intended to be used to and capable of attaching an objective lens to a microscope. Therefore, for purposes of examination the examiner will treat “for attaching a microscope objective to a microscope component” in the preamble as an intended use and “a mount which is capable of being arranged or fastened to the microscope component” and “a ring part, which comprises an eye [[for]] that is capable of attaching the microscope objective or is capable of being attached to or formed on the microscope objective”.
Claims 2-9 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Regarding claims 1, 3 and 7-8 “the receptacle” has antecedent issues. It is unclear if the receptacle is a new/different element or if it is referring to an element already introduced. In light of the specification, see objections above, reference number 14 is associated with the terms “mount” and “receptacle”. The examiner interprets “the receptacle” is referring to the “mount” introduced earlier in claim 1. The examiner suggests and for purposes of examination will use “a receptacle [[mount]]” in line 3 of claim 1.
Claims 2-9 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Further regarding claim 1 “the base” has antecedent issues. It is unclear if the annular base introduced earlier in the claim is meant (assumed) or if is a new/different element is being to introduced. The examiner suggests and for purposes of examination will use “the annular base” in line 18 of claim 1.
Claims 2-9 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Regarding claims 4-6 the “repositioning element” and the “pin” raises clarity issues. Since the specification’s description of the invention does not use the term “repositioning element” it is unclear if applicant means the resetting device, i.e. the combination of stop 29, reset plunger 33 and spring 34 (assumed); or if a different element is meant e.g. pin/rotation stop 30. The examiner suggests and for purposes of examination will use “resetting device” in claims 4-6 and “reset plunger” in claim 6.
Further regarding claim 6 “the resetting device comprises a reset plunger which is biased on the securing cam in a direction pointing away from the opening” renders the claim vague and indefinite. Particularly, the boundaries of the functional language of “biased” is unclear because the claim does not provide a discernable boundary on what structural elements causes the biasing. Since the recited function does not follow from the structure recited in the claim, i.e. “the resetting device”, “a reset plunger” and “the securing cam” are not inherently biasing elements. So it is unclear whether the biasing function requires some other structure or is simply a result of the arrangement of components. Thus, one of ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claim. It has been held “when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008); see MPEP 2173.05(g). In light of the specification, for example figures 6 spring 34, it is clear that the magnetic attraction is a result of further structure. The examiner suggests and for purposes of examination will use “the resetting device comprises a reset plunger , wherein the reset plunger is biased by a spring in a direction pointing away from the opening.”
Regarding claim 9 “wherein the microscope component is a microscope stand” raises clarity issues. The examiner is unsure what the scope of a microscope stand is, i.e. does it place the microscope objective in a working position or does it place the microscope objective in a storage/unused position or is it limiting the kind of microscope to an inverted microscope. The specification sheds no light on this issue. Further, since the invention is interpreted to be an attachment device intended to be used for attaching a microscope objective to a microscope component, as set forth above, i.e. the microscope component is not interpreted to be part of the invention. Thus, the sole limitation appears to be limiting elements that are not considered to be elements of the invention. This furthers the clarity issues since is unclear how the claimed attaching apparatus, per se, is structurally or functionally further limited by limiting the intended use to a microscope stand. For purposes of examination the examiner will assume that any apparatus intended for/capable of attaching a microscope objective to a microscope component inherently could be used for/capable of attaching a microscope objective to a microscope stand (whatever that is). This interpretation does not overcome the clarity rejection and the examiner respectfully suggest cancelling this claim.
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.
Claims 1-3 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fahlbusch et al. US Patent Application Publication 2013/0027768, of record.
Regarding claim 1 Fahlbusch discloses an apparatus (title e.g. see figures 1-2) for attaching a microscope objective to a microscope component (further paragraph [0001] “invention relates to a device for attaching a first part, preferably an optical microscope component, to a second part, preferably a microscope stand”), wherein the apparatus comprises: a receptacle (e.g. receptacle 2) which is capable of1 being arranged or fastened to the microscope component (e.g. paragraph [0041] “suitable in particular for the field of microscopy, by securely fixing the receptacle 2 to the stand or a microscope component of a microscope”) and comprises an annular base (e.g. base ring 9) and a retaining collar (e.g. retaining collar 6) with a lateral opening (e.g. lateral opening 7) comprising a width (e.g. paragraph [0044] “opening 7 corresponds to the width”), a ring part (e.g. insertion part 1), which comprises an eye (e.g. ring inside 5) that is capable of2 attaching the microscope objective or is capable of3 being attached to or formed on the microscope objective (e.g. paragraphs [0044 & 0055] “microscope objective 13 can be attached to the insertion part 1” see figure 9), the ring part (e.g. 1) comprising at least two retaining flanges (e.g. retaining projections 10), and two opposing flattened portions (e.g. two lateral flats 3) which are set back relative to an outer circumference of the retaining flanges and which are spaced from each other by a distance (e.g. see figure 3 distance w), wherein the distance is smaller than the width of the lateral opening (e.g. paragraph [0048] “insertion part 1 can be designed such that the flats 3 are dimensioned such that the distance between the surfaces 3 is greater than the distance w in the receptacle 2” see figure 3), so that the ring part with its flattened portions is pushable through the lateral opening transversely to a ring axis of the receptacle into the retaining collar into a pre-locking position (e.g. paragraph [0047] “the insertion part 1 is inserted through the opening 7 into the receptacle 2” see figure 3), wherein in the pre-locking position (e.g. see figures 4-6) not all retaining flanges engage in the retaining collar (e.g. paragraph [0049] “two of the three retaining projections 10 engage with the retaining collar 6” see figure 5 showing flange 10 in opening 7), and wherein the ring part is rotatable in the receptacle from the pre-locking position into a locking position in which all retaining flanges engage in the retaining collar (e.g. paragraph [0052] “Insertion part 1 and receptacle 2 are then reciprocally rotated … until the third retaining surface 10b also engages” see figure 7), a securing cam (e.g. tensioning element 12) formed on an edge of the opening and projecting towards an interior of the retaining collar (e.g. see figures 2 & 14), and a securing projection formed at one end of one of the flattened portions (e.g. figure 12 bearing surfaces 11 in upper right corner), which securing projection projects towards an outside of the ring (e.g. see figure 13) and comes to lie between the securing cam and the annular base of the receptacle when the ring part is in the pre-locking position (e.g. given the position of 11 noted in figure 12 upon insertion seen in figure 14 it would be disposed as claimed) and which securing projection together with the securing cam blocks the ring part against release from the receptacle along the ring axis (implicit given inter alia paragraph [0054] discussing 11 being pressed against the upper side of the base ring in the area of 12).
Regarding claim 2 Fahlbusch discloses the apparatus according to claim 1, as set forth above. Fahlbusch further discloses wherein the retaining flange (e.g. 10) which adjoins the other end of the flattened portion provided with the securing projection defines a groove (e.g. surface 10b) which extends along the retaining flange and through which the securing cam runs when the ring part is rotated into the locking position (see figures).
Regarding claim 3 Fahlbusch discloses the apparatus according to claim 2, as set forth above. Fahlbusch further discloses wherein the groove (e.g. 10b) comprises at least on its side oriented towards the receptacle a projection (e.g. figure 12 bottom right 11) which, together with the securing cam, prevents the ring part from slipping axially out of the receptacle when rotating from the pre-locking position into the locking position (implicit given inter alia paragraph [0054] discussing 11 being pressed against the upper side of the base ring in the area of 12).
Regarding claim 8 Fahlbusch discloses the apparatus according to claim 1, as set forth above. Fahlbusch further discloses wherein the securing projection comprises a length along one of the flattened portions which is dimensioned in such a way that the ring part can be inserted into the receptacle with a movement along its ring axis at a distance between the ring axes of the ring part and of the receptacle which does not exceed half the ring radius (e.g. see figure 3).
Regarding claim 9 Fahlbusch discloses the apparatus according to claim 1, as set forth above. Fahlbusch further discloses wherein the microscope component is a microscope stand (inherent as set forth in the 112 rejection above, further paragraph [0001] “…a second part, preferably a microscope stand”).
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.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Fahlbusch et al. US Patent Application Publication 2013/0027768 in view of Plangger US Patent Application Publication 2009/0128934, of record.
Regarding claim 7 Fahlbusch discloses the apparatus according to claim 1, as set forth above. Fahlbusch does not disclose wherein at least one pair of magnets is arranged on the receptacle and the ring part, of which one individual magnet is attached to the receptacle and the other magnet is attached to the ring part, the individual magnets of the one pair of magnets being arranged in such a way that in the pre-locking position the individual magnets pull the ring part and the receptacle together along the ring axis.
Plangger teaches a similar apparatus for attaching a lens to a component (inter alia abstract “mechanisms is designed to be attached to the eyepiece of the observation device or to the lens of the recording device by means of the attachment portion” see figures 1-5 adaptor 1) including a ring part (e.g. 8) with flanges (e.g. 11) and a receptacle (e.g. 4) with a retaining collar (e.g. 10); and further teaches additionally using magnets on the two interfacing surfaces (paragraph [0088] last two sentences) for the purpose of providing an additional centering assisting means created by magnetic attraction (paragraph [0088] last three sentences). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the apparatus as disclosed by Fahlbusch to have magnets on the two interfacing surfaces of the ring part and the receptacle as taught by Plangger for the purpose of providing an additional centering assisting means created by magnetic attraction.
Allowable Subject Matter
Claims 4-6 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: with respect to the allowable subject matter, none of the prior art either alone or in combination disclose or teach of the claimed combination of limitations to warrant a rejection under 35 USC 102 or 103. Specifically, with respect to claim 4 (and therefore its depends 5-6), insofar as it is understood, none of the prior art either alone or in combination disclose or teach of the claimed apparatus specifically including, as the distinguishing features in combination with the other limitations, the securing cam including, on its side pointing away from the opening, a resetting device which, when the ring part rotates beyond an end position assigned to the locking position, presses the ring part back in the direction of the pre-locking position.
For example looking at the nearest art, Fahlbusch paragraph [0045] discusses the tensioning element (12) as including a spring to force the receptacle (2) away from the retaining collar (6). However, the direction of the force urges the interfacing surfaces of the receptacle (2) and insertion part (1) together. Thus Fahlbusch’s spring/biasing element is in a different direction and at least fails to urge the ring part back to the locking position when over-rotated.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fahlbusch et al. US Patent Application Publication 2023/0116753, of record; in regards to a similar apparatus, see figures 1-2C, but at least fails to have a resetting device as required by claim 4.
Fahlbusch et al. US Patent Application Publication 2024/0329380; in regards to a similar apparatus, see figures 1A-1C, but at least fails to have a resetting device as required by claim 4.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571) 272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/George G. King/Primary Examiner, Art Unit 2872 March 13, 2026
1 It has been held that the recitation that an element is "capable of" performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense; In re Hutchison, 69 USPQ 138. Also see Intel Corp. v. U.S. Int'l Trade Comm’n, 946 F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed. Cir. 1991), MPEP 2114. IV and MPEP 2173.05(g).
2 Ibid.
3 Ibid.