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 .
Note Regarding Prior Art
Examiner cites particular sections, columns, line numbers, paragraphs and figures, in the references as applied to the claims below 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. It is respectfully requested that, in preparing responses, the Applicant fully consider the references in their entirety 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.
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(s) 1, 2, 4 – 6, 9, 10, 12, 14 – 16, 28, 30, 33 and 35 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Fairley et al. (US 2005/0156098 A1; hereinafter “Fairley”).
Regarding claim 1, Fairley teaches an imaging system (figure 5; paragraph 43) comprising:
an imaging device (system 500; paragraph 43), comprising:
an illumination unit that includes a radiation source (laser 501; paragraph 43) optically coupled to a first optical transformation device (fly lens array 503; paragraph 43), which is capable of providing wherein the first optical transformation device applies a first optical transformation to a light beam received from the radiation source to generate an illumination pattern that is directed to a corresponding area of an object;
a projection unit (objective 507; paragraph 43) that receives light reflected, transmitted, scattered, or emitted by the object and directs it to a detection unit, wherein the projection unit is configured to accept said light within a defined range of propagation angles;
a detection unit that includes one or more image sensors (e.g., sensor 512; paragraph 43) configured for, or capable of providing a, time delay and integration (TDI) imaging (e.g., paragraph 43) and optically coupled to a second optical transformation device (pinhole mask 510; paragraphs 43 and 51), wherein the second optical transformation device applies a second optical transformation to light received from the projection unit;
the imaging system considered capable of providing wherein the illumination pattern generated by the first optical transformation causes the light accepted by the projection unit to comprise high-resolution spatial information about the object that would not be contained in the light accepted by the projection unit in a comparable imaging device lacking the first optical transformation device (e.g., paragraphs 20 – 22); and wherein the second optical transformation generates an optical image at the one or more image sensors that comprises all or a portion of said high-resolution spatial information (e.g., paragraphs 20 – 22); and
an actuator (e.g., wafer stage; paragraph 45) configured to create relative movement between the imaging device and the object during a scan of all or a portion of the object, wherein the relative movement is synchronized with the time delay and integration (TDI) imaging such that a scanned image of all or a portion of the object is acquired by the one or more image sensors.
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The cited prior art teaches all of the positively recited structure of the claimed apparatus. The recitation of a new intended use, for an old product, does not make a claim to that old product patentable. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). See MPEP §§ 2114 and 2173.05(g).
Regarding claim 2, Fairley teaches the imaging system of claim 1, wherein the imaging system is considered capable of providing wherein the illumination pattern comprises a plurality of light intensity maxima, and wherein the second optical transformation compensates for a spatial offset between the plurality of light intensity maxima in the illumination pattern and a plurality of signal intensity maxima that would be measured by individual image sensor pixels laterally offset relative to the light intensity maxima in scanned images acquired using an otherwise identical imaging system that lacks the second optical transformation device, the second optical transformation thereby enabling acquisition of a scanned image of higher resolution than would be acquired using an otherwise identical imaging system that lacks the second optical transformation device. This claim recitation is considered to be a statement of intended use of manner of operation, which does not further limit or define the claimed apparatus structure itself. See MPEP §§ 2114 and 2173.05(g).
Regarding claim 4, Fairley teaches the imaging system of claim l, wherein the imaging system is considered capable of providing wherein the scanned image generated by at least one of the one or more image sensors exhibits a lateral spatial resolution that exceeds a diffraction-limited spatial resolution. This claim recitation is considered to be a statement of intended use of manner of operation, which does not further limit or define the claimed apparatus structure itself. See MPEP §§ 2114 and 2173.05(g).
Regarding claim 5, Fairley teaches the imaging system of claim l, wherein the imaging system is considered capable of providing wherein the scanned image acquired by at least one of the one or more image sensors exhibits an increased signal-to-noise ratio (SNR) compared to a signal-to-noise ratio (SNR) of an otherwise identical imaging system that lacks the second optical transformation device (e.g., paragraphs 43 – 45; figure 5). This claim recitation is considered to be a statement of intended use of manner of operation, which does not further limit or define the claimed apparatus structure itself. See MPEP §§ 2114 and 2173.05(g).
Regarding claim 6, Fairley teaches the imaging system of claim l, wherein the imaging system is considered capable of providing wherein, at any given point in time during the scan, the second optical transformation device reroutes and redistributes light received from the projection unit to present a modified optical image of the object to the one or more image sensors, wherein the modified optical image represents a spatial structure of the object that is inferable from properties of the light received from the projection unit and a known illumination pattern projected on the object at that point in time, and wherein the one or more image sensors integrate signals from a plurality of modified optical images over a period of time required to perform the scan of the object (figure 5). This claim recitation is considered to be a statement of intended use of manner of operation, which does not further limit or define the claimed apparatus structure itself. See MPEP §§ 2114 and 2173.05(g).
Regarding claim 9, Fairley teaches the imaging system of claim l, wherein the imaging system is considered capable of providing wherein the imaging system comprises only components for which their position, relative orientation, and optical properties remain static during imaging (figure 5), with the exception of (i) the actuator configured to create relative motion between the imaging device and the object, and (ii) components of an autofocus system (paragraphs 47 and 50; claim 8). This claim recitation is considered to be a statement of intended use of manner of operation, which does not further limit or define the claimed apparatus structure itself. See MPEP §§ 2114 and 2173.05(g).
Regarding claim 10, Fairley teaches the imaging system of claim l, wherein the second optical transformation device is a lossless optical transformation device (pinhole mask 510; paragraphs 43 and 51).
Regarding claim 12, Fairley teaches the imaging system of claim l, wherein the actuator (e.g., wafer stage; paragraph 45) further comprises a moveable stage mechanically coupled to the object to support, rotate, or translate the object relative to the imaging device, or any combination thereof.
Regarding claim 14, Fairley teaches the imaging system of claim 1, wherein the one or more image sensors (sensor 512 can comprise a TDI sensor; paragraph 43) comprise one or more time delay and integration (TDI) cameras, or one or more cameras comprising a TDI mode of image acquisition, and wherein the relative movement between the imaging device and the object is capable of being synchronized to a line shift or an image shift in the one or more image sensors so as to minimize motion blurring during image acquisition.
Regarding claim 15, Fairley teaches the imaging system of claim l, wherein the imaging system is capable of providing wherein integration of illumination pattern light intensity directed to the object during a scan results in approximately the same total exposure to illumination light at every location of the object (e.g., paragraphs 43 – 45; figure 5).
Regarding claim 16, Fairley teaches the imaging system of claim 2, wherein the imaging system is capable of providing wherein a separation distance between any two of the plurality of light intensity maxima in the illumination pattern is at least 1x to 100x of a full width at half maximum (FWHM) of a corresponding intensity peak profile. This claim recitation is considered to be a statement of intended use of manner of operation, which does not further limit or define the claimed apparatus structure itself. See MPEP §§ 2114 and 2173.05(g).
Regarding claim 28, Fairley teaches the imaging system of claim l, wherein the imaging device is configured to perform fluorescence imaging, and wherein the illumination unit is configured to provide excitation light at two or more excitation wavelengths (e.g., paragraphs 42, 43 and 54; claims 2 and 11).
Regarding claim 30, the cited prior art neither teaches nor fairly suggests the imaging system of claim l, further comprising a synchronization unit (e.g., focus actuator 903 for facilitating the dynamic autofocus capability; paragraphs 46, 47 and 50) configured to control the synchronization of the relative movement of the imaging device (system 500; paragraph 43) and the object to the time delay and integration (TDI) of the one or more image sensors (sensor 512 can comprise a TDI sensor; paragraph 43).
Regarding claim 33, Fairley teaches the imaging system of claim l, wherein the second optical transformation device (pinhole mask 510; paragraphs 43 and 51) is not a diffraction grating.
Regarding claim 35, Fairley teaches the imaging system of claim l, further comprising one or more pinhole aperture arrays (pinhole mask 510; paragraphs 43 and 51) positioned on or in front of the one or more image sensors, wherein the pinhole aperture arrays are configured to, capable of being able to, reduce artifacts in a point spread function for the imaging system.
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.
Claim(s) 17, 18 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fairley et al. (US 2005/0156098 A1; hereinafter “Fairley”) in view of Shroff et al. (US 2020/0064611 A1; hereinafter “Shroff”).
Regarding claim 17, Fairley does not specifically teach the imaging system of claim l, wherein the first optical transformation device or the second optical transformation device or both comprises a micro-lens array (MLA), and wherein the micro-lens array (MLA) comprises a regular arrangement of two or more micro-lenses.
Regarding claim 18, Fairley does not specifically teach the imaging system of claim 2, wherein the second optical transformation device comprises a micro-lens array, and wherein there is a 1:1 correspondence between the plurality of light intensity maxima in the illumination pattern and micro-lenses in the micro-lens array.
However, the use of micro-lens-arrays in illumination microscopy for use with imaging techniques is well known in the art as evidenced by Shroff (e.g., paragraphs 37, 42, 51, 53, 61 and 62). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the micro-lens array configuration as claimed with the disclosed apparatus for enabling effective imaging.
Regarding claim 22, Fairley teaches the imaging system of claim 17, wherein the imaging system is capable of providing wherein a projection of the regular arrangement onto an object plane comprising the object is rotated with respect to a direction of the relative movement. This claim recitation is considered to be a statement of intended use of manner of operation, which does not further limit or define the claimed apparatus structure itself. See MPEP §§ 2114 and 2173.05(g).
Claim(s) 31 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fairley et al. (US 2005/0156098 A1; hereinafter “Fairley”) in view of Guo (US 2019/0226992 A1; hereinafter “Guo”).
Regarding claim 31, Fairley does not specifically teach the imaging system of claim l, wherein the object comprises a flow cell or substrate for performing nucleic acid sequencing.
Regarding claim 32, Fairley does not specifically teach the imaging system of claim 31, wherein the flow cell or substrate comprises at least one surface, and wherein the at least one surface comprises a plurality of single nucleic acid molecules.
However, the use of flow cell apparatus with structured illumination microscopy for use in sequencing nucleic acids is well known in the art as evidenced by Guo (e.g., paragraphs 58 and 79). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein the object comprises a flow cell or substrate for performing nucleic acid sequencing, and wherein the flow cell or substrate comprises at least one surface, and wherein the at least one surface comprises a plurality of single nucleic acid molecules.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J. SINES whose telephone number is (571)272-1263. The examiner can normally be reached 9 AM-5 PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BRIAN J. SINES
Primary Patent Examiner
Art Unit 1796
/BRIAN J. SINES/Primary Examiner, Art Unit 1796
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