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 .
Election/Restrictions
Applicant’s election without traverse of Species 4 (Figure 3A) in the reply filed on 3/23/2026 is acknowledged.
Contrary to Applicants’ assertions (See 2-3 of the reply filed 3/23/2026), Claim 5 is not readable on Figure 3A, and is instead readable on Figure 4B (Species 7). Additionally, Claim 11 is not readable on Figure 3A, and is instead readable on Figure 4A (Species 6).
Claims 2, 5-11, 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/23/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Acknowledgment is made of applicant’s claim for priority under 35 U.S.C. 120.
Drawings
The originally filed drawings were received on 4/4/2024. These drawings are acceptable.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because of the following informalities:
Abstract, line 1- ‘The disclosure relates to a’ should read ‘A’
Abstract, line 1- ‘comprising’ should read ‘including’
Abstract, line 6- ‘The disclosure further relates to a’ should read ‘Further, a’
Abstract, line 7- ‘comprising’ should read ‘including’.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
Claims 1, 3-4, 12-13, 16-20 are 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 1 recites the limitation "the polarization of the light beam" in line 6. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, this has been interpreted to be ‘a polarization of the light beam’.
Claims 3-4, 12, 16-20 are dependent on Claim 1, and hence inherit the deficiencies of Claim 1.
Claim 3, lines 4-7 include the non-elected subject matter limitations ‘or the focusing device comprises a first focusing element arranged in the first light path and a second focusing element arranged in the second light path, wherein the first focusing element and the second focusing element comprise different focal lengths’. This appears to be problematic since the non-elected subject matter cannot be examined simultaneously with the elected subject matter. For purposes of examination, these limitations have not been given any significant patentable weight. Correction is required.
Claims 4-6 are dependent on Claim 3, and hence inherit the deficiencies of Claim 3.
With respect to Claim 13, use of ‘and/or’ (See line 3) creates uncertainty as to the metes and bounds of the claim because it is unclear from the multiplicity of combinations possible which features are intended to be included in the claimed combination. For purposes of examination, ‘and/or’ has been interpreted in the alternative, i.e. ‘or’.
Claim 16, line 3 recites the limitation ‘a microscope objective lens’. However, Claim 1, line 5 also recites the limitation ‘a microscope objective lens’. This appears to be problematic since it is not clear whether the lens in Claim 16 is to refer to that in Claim 1, or to a separate, unique lens. For purposes of examination, this limitation has been interpreted to be ‘the microscope objective lens’.
Claim 16, line 3 recites the limitation ‘a main focus’. However, Claim 1, line 4 also recites the limitation ‘a main focus’. This appears to be problematic since it is not clear whether the focus in Claim 16 is to refer to that in Claim 1, or to a separate, unique focus. For purposes of examination, this limitation has been interpreted to be ‘the main focus’.
Claim 16, lines 7-8 recites the limitation ‘a first axial position’. However, Claim 1, line 5 also recites the limitation ‘a first axial position’. This appears to be problematic since it is not clear whether the position in Claim 16 is to refer to that in Claim 1, or to a separate, unique position. For purposes of examination, this limitation has been interpreted to be ‘the first axial position’.
Claim 16, line 8 recites the limitation ‘a second axial position’. However, Claim 1, lines 5-6 also recites the limitation ‘a second axial position’. This appears to be problematic since it is not clear whether the position in Claim 16 is to refer to that in Claim 1, or to a separate, unique position. For purposes of examination, this limitation has been interpreted to be ‘the second axial position’.
Claims 17-18 are dependent on Claim 16, and hence inherit the deficiencies of Claim 16.
Claim 18 includes the abbreviation “MINFLUX” in line 1. The full, unabbreviated word or phrase must be included the first time an abbreviation is used.
With respect to Claim 19, use of ‘and/or’ (See lines 1 and 5) creates uncertainty as to the metes and bounds of the claim because it is unclear from the multiplicity of combinations possible which features are intended to be included in the claimed combination. For purposes of examination, ‘and/or’ has been interpreted in the alternative, i.e. ‘or’.
Claim 19, line 4 recites the limitation ‘a main focus’. However, Claim 1, line 4 also recites the limitation ‘a main focus’. This appears to be problematic since it is not clear whether the focus in Claim 19 is to refer to that in Claim 1, or to a separate, unique focus. For purposes of examination, this limitation has been interpreted to be ‘the main focus’.
Claim 19, line 7 recites the limitation ‘a first optical axis’. However, Claim 1, lines 2-3 also recites the limitation ‘a first optical axis’. This appears to be problematic since it is not clear whether the axis in Claim 19 is to refer to that in Claim 1, or to a separate, unique axis. For purposes of examination, this limitation has been interpreted to be ‘the first optical axis’.
Claim 19, line 9 recites the limitation ‘a first axial position’. However, Claim 1, line 5 also recites the limitation ‘a first axial position’. This appears to be problematic since it is not clear whether the position in Claim 19 is to refer to that in Claim 1, or to a separate, unique position. For purposes of examination, this limitation has been interpreted to be ‘the first axial position’.
Claim 19, lines 9-10 recites the limitation ‘a second axial position’. However, Claim 1, lines 5-6 also recites the limitation ‘a second axial position’. This appears to be problematic since it is not clear whether the position in Claim 19 is to refer to that in Claim 1, or to a separate, unique position. For purposes of examination, this limitation has been interpreted to be ‘the second axial position’.
Claim 20 is dependent on Claim 19, and hence inherits the deficiencies of Claim 19.
Claim 20 includes the abbreviation “MINFLUX” in line 1. The full, unabbreviated word or phrase must be included the first time an abbreviation is used.
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.
Claim(s) 1, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP H10-141914A, of record.
JP H10-141914A discloses a focusing device (See for example Abstract; Figures 1-6) for a microscope comprising a first polarization switching element (See for example 24 in Figure 1; Paragraphs 0016, 0019-0020 of the English translation) configured to rotate a polarization of a linearly polarized light beam around a first optical axis from a first polarization direction to a second polarization direction upon receiving a switching signal, and a focusing element (See for example 26 in Figure 1; Paragraphs 0016, 0018-0020 of the English translation) configured to axially displace a main focus of the light beam generated by a microscope objective lens between a first axial position (See for example focal point T1 in Figures 3-4) and a second axial position (See for example focal point T2 in Figures 3-4) dependent on a polarization of the light beam.
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.
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) 1, 3-4, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Knox (U.S. Patent Application Publication US 2020/0054485 A1) in view of JP S63-311322 A.
Knox discloses a focusing device (See for example Abstract; Figures 1-17, and in particular Figures 7-8) for a microscope comprising a first polarization switching element (See for example 16 in Figure 7; Paragraph 0040) configured to rotate a polarization of a linearly polarized light beam (See for example 14 in Figure 7) around a first optical axis upon receiving a switching signal (See for example 35 in Figure 7), and a focusing element (See for example 66 in Figure 7; Paragraph 0042) configured to axially displace a main focus of the light beam generated by a microscope objective lens between a first axial position (See for example focal point 72 in Figure 7) and a second axial position (See for example focal point 74 in Figure 7) dependent on a polarization of the light beam. Knox further discloses the focusing device comprises a first polarizing beam splitter (See for example 18 in Figure 7) configured to direct the light beam along a first light path (See for example 62 in Figure 7) and a second light path (See for example 64 in Figure 7) dependent on the polarization of the light beam, wherein the focusing element (See for example 66 in Figure 7) is arranged in the first light path or the second light path; and the focusing device comprises a second beam splitter (See for example 28 in Figure 7) configured to join the first light path and the second light path, wherein the second beam splitter is a polarizing beam splitter (See for example Paragraph 0033).
Knox discloses the invention as set forth above, and additionally discloses that the first polarization switching element is configured to be adjusted to maintain or adjust the relative pulse energies in each of the first and second beams by adjusting the rotation of the half wave plate to achieve a desired orientation with respect to the orthogonal polarization axes of the first polarization beamsplitter (See for example Paragraph 0040). However, Knox does not specifically disclose rotating the polarization of the light beam from a first polarization direction to a second polarization direction so that the pulse energies are only in either the first or second beams. However, JP S63-311322 A teaches a conventional polarization device for arbitrarily controlling the intensity ratio between two light paths (See for example Abstract; Figures 1-15, and in particular Figure 11), wherein a polarization switching element in the form of a half wave plate (See for example 41 in Figure 11) may be adjusted in such a way that the light intensity only shows up in one of the output beams (See for example ‘P’ and ‘S’ in Figure 11; Discussion of Figure 11 on Pages 4-5 of the English translation). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to rotate the polarization of the light beam from a first polarization direction to a second polarization direction so that the pulse energies are only in either the first or second beams, as taught by JP S63-311322 A, in the focusing device of Knox, to allow for flexibility in the production of the focal points, e.g. the ability to produce only a single focal point at either a shallower or a deeper position, or to produce two focal points simultaneously at both a shallower and deeper position where each focal point may have adjustable intensities, based on the intended application.
Allowable Subject Matter
Claims 12, 16-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, 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:
Claim 12 is allowable over the cited art of record for at least the reason that the cited art of record fails to teach or reasonably suggest a focusing device as generally set forth in Claims 1, 12, the device including, in combination with the features recited in Claims 1, 12, wherein the focusing device comprises a telescope comprising a first telescope lens and a second telescope lens, wherein the telescope is configured to generate an intermediate focus of the light beam between the first telescope lens and the second telescope lens, wherein the focusing element is configured to shift an axial position of the intermediate focus dependent on the polarization of the light beam, wherein the telescope is the focusing element.
Claim 16 is allowable over the cited art of record for at least the reason that the cited art of record fails to teach or reasonably suggest a microscope as generally set forth in Claims 1, 16, the microscope including, in combination with the features recited in Claims 1, 16, a microscope for imaging or localizing molecules or particles in a sample, comprising a light source configured to provide a linearly polarized light beam, the microscope objective lens configured to generate the main focus of the light beam in or on the sample, and a detector configured to detect light emanating from the molecules or particles, wherein the microscope comprises a focusing device according to claim 1, wherein the focusing device is configured to axially displace the main focus between the first axial position and the second axial position. Claims 17-18 are dependent on Claim 16, and hence are allowable for at least the same reasons Claim 16 is allowable.
Claim 19 is allowable over the cited art of record for at least the reason that the cited art of record fails to teach or reasonably suggest a method as generally set forth in Claims 1, 19, the method including, in combination with the features recited in Claims 1, 19, a method for imaging or localizing molecules or particles in a sample using the focusing device according to claim 1, generating a linearly polarized light beam, generating the main focus of the light beam in or on a sample, and detecting light emanating from the molecules or particles to image or localize the molecules or particles, wherein a polarization of the light beam is rotated around the first optical axis from a first polarization to a second polarization, the main focus is axially displaced between the first axial position and the second axial position dependent on the polarization of the light beam. Claim 20 is dependent on Claim 19, and hence is allowable for at least the same reasons Claim 19 is allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARNEL C LAVARIAS whose telephone number is (571)272-2315. The examiner can normally be reached M-F 10:30 AM-7 PM.
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ARNEL C. LAVARIAS
Primary Examiner
Group Art Unit 2872
4/7/2026
/ARNEL C LAVARIAS/Primary Examiner, Art Unit 2872
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