DETAILED ACTION
This office action is in response to a request for reconsideration filed 3/10/2026, wherein claims 1-20 are pending and being examined. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments filed 3/10/2026 indicate that a terminal disclaimer is included in the filed response. However, a review of all material submitted with the response was performed and no terminal disclaimer has been submitted at the time of mailing of this office action. Therefore the double patenting rejection is maintained.
Applicant's arguments filed 3/10/2026 with respect to the prior art rejections have been fully considered but they are not persuasive.
Applicant argues on pages 1-2 of the filed Remarks that Shirota does not disclose the capture condition of claim 1. Specifically, Applicant argues “Shirota does not disclose the triggering of image capture based on position monitoring as claimed…. Consistent with this system design, Shirota's position-based thresholding is described as a condition for saving or storing an enlarged image that is "transferred at that time" from the image capturing unit, not as a condition that triggers image capture.” Applicant further argues on pages 2-3 of the filed Remarks that Shirota does not disclose the capture condition of claim 3. Specifically, Applicant argues that the capturing of Shirota “is a storage decision tied to movement, not a capture-trigger command that causes the capture to occur only after the predetermined distance has been traversed… Shirota's capture unit is not described as being inactive between threshold crossings, nor does Shirota describe that the capture unit captures only at the threshold crossings. Instead, Shirota's disclosure is consistent with continuous acquisition and selective saving.” The examiner respectfully disagrees.
Applicant appears to be arguing that saving an image into memory differs from the claimed "capturing" of image data, but the examiner disagrees, noting that in the art of cameras the term "capture" has a standard meaning of requiring an image to be saved into memory. A person of ordinary skill in the art would readily appreciate that the step of recording/saving an image of Shirota is equivalent to the claimed image "capture" because it is known in the art that a capture command of a camera is a readout/recording operation. For example, when using a modern day camera, such as a camera integrated in a smart phone, a user who wishes to capture a camera will load an application that uses the camera's sensor area to show a preview of a capture area on a display screen. Showing this preview screen (which still uses the detector array of the camera) is NOT considered a step of "capturing" in the art of cameras. A person of ordinary skill would readily recognize that in order to actually "capture" an image using their smart phone camera, a trigger (usually a button) is needed that results in recording a frame of image data in memory. That is, a picture is not considered "captured" or "acquired" by the camera until the user selects a button that initiates ("triggers") a save/record function that actually writes an image into memory. By Applicants logic, any preview screen of a camera that shows a potential capture area prior to actual recording/saving of the picture into memory is performing "image capture". This contradicts with what is unquestionably well-known in the art, which is that an image is only considered "captured" when it is actually saved into a memory.
The examiner further asserts that a person of ordinary skill in the art would readily understand the interchangeability of the term "acquire", as used by Shirota, and the term "capture" as used by the claims. Shirota clearly discloses that when movement is beyond a threshold, an image is "acquired" and therefore "captured" by the system. For example, see ¶0035-¶0036 of Shirota:
[0035] Accordingly, even if the stage 6 is moved simultaneously in the X direction and in the Y direction and the movement distance exceeds a predetermined distance, an enlarged image G is not saved unless the stage 6 is moved by the predetermined distance either in the X direction or in the Y direction. This serves to maintain a uniform overlapping width between adjacent images that are saved. Thus, it is possible to readily execute processing for joining images together, in which displacements caused in image pattern recognition using images having overlapping portions are suppressed.
[0036] The image processing unit 13 is configured to form an array of enlarged images corresponding to portions of the sample A, stored in the storage unit 12, thereby creating a virtual slide in which the enlarged images are joined together. Specifically, since each enlarged image corresponding to a portion of the sample A is stored in association with the position information of the stage 6 at the time of acquisition of the enlarged image, it is possible to create a virtual slide simply by joining together the enlarged images to form an array according to the position information of the stage 6.
Here, Shirota explicitly states that an enlarged image is not acquired ("captured") unless the stage has moved a predetermined distance. It is clear that the enlarged image has a "time of acquisition" and a person of ordinary skill would readily understand the equivalence of a "time of acquisition" with a "time of capture" under broadest reasonable interpretation. The whole purpose of Shirota is to only acquire images when the stage has moved a distance, as the enlarged images are not recorded unless the stage is moved a certain distance. To further emphasize this interpretation, see ¶0044 and ¶0069 of Shirota:
[0044] The determining unit 11 compares the calculated difference (X−Xn-1, Y−Yn-1) representing the movement distance with the predetermined thresholds (Xc, Yc) to determine whether the X component X−Xn-1 and the Y component Y−Yn-1 of the difference are greater than the thresholds Xc and Yc, respectively (steps S5 and S6). Then, when either X−Xn-1>Xc or Y−Yn-1>Yc is satisfied, the determining unit 11 stores an enlarged image acquired at that instance in the storage unit 12 in association with the position information (Xn, Yn) of the stage 6 at that instance.
[0069] Accordingly, images are not acquired when the relative moving velocity is greater than or equal to the predetermined threshold, whereas images are acquired when the relative moving velocity is less than the predetermined threshold. Generally, when moving the objective lens 9 and the stage 6 relative to each other while operating the operation input unit 4, the relative moving velocity is high in regions not of interest, such as regions where the subject of observation is absent. On the other hand, the relative moving velocity is low in regions where the subject of observation is present. Thus, in a region where the subject of observation is present, the relative moving velocity is less than the predetermined threshold, so that an enlarged image G is acquired by the image capturing unit 10 each time a relative movement by the predetermined distance occurs.
Here, Shirota even explicitly states the enlarged image is NOT continuously acquired and that an enlarged image is only acquired (and therefore "captured") each time the stage is moved by a predetermined distance and the movement speed is below a certain threshold. Applicant is arguing the semantics of the word "captured" while disregarding that the functionality of Shirota mimics that of the claimed invention, which is acquiring images only when a stage has moved a predetermined distance relative a sample. It is unclear how an "acquisition" command (which is clearly disclosed by Shirota) would differ from a "capture" command, as these two terms are known equivalents to a person of ordinary skill under broadest reasonable interpretation. Furthermore there is nothing in the claims preventing an "acquisition" command from being a "capture" command.
Applicant further argues on pages 4-5 of the filed Remarks that the combination of Shirota and Maddison does not disclose claim 12. Specifically, Applicant first argues that the capturing of Shirota differs from the capture condition of the claims. Specifically Applicant argues “Shirota again describes a save/store decision based on displacement rather than an image capture based on positioning as required by claim 12. Accordingly, even if Shirota monitors position and applies a displacement threshold, it does so only to decide when to save or store an already acquired image, not to trigger the "capturing one or more images of the sample held by the sample holder each time the scan head moves a predetermined distance " as required by claim 12.” The examiner respectfully disagrees.
Again, just because an image capturing unit may continuously feed image data to a controller, this does not mean the image data is actually acquired or “captured” as alleged by Applicant. The examiner again notes that modern day cameras routinely have preview/viewfinders where image data is transferred from a sensor array to a display, but a person of ordinary skill would never consider the image data as actually “captured” unless it is recorded somewhere in memory. Applicant’s interpretation of the claimed “capture” command as one that does not require any sort of recording function contradicts the common understanding of the term “image capture” in the art, which is that image data is recorded in a memory.
Applicant further argues on page 5 that the combination of Shirota and Maddison does not disclose claim 12. Specifically, Applicant argues “even assuming that Maddison's teachings regarding velocity profiling and motion control were applied to Shirota's scanning system, the resulting combination would still fail to meet claim 12's requirement of capturing one or more images "each time the scan head moves a predetermined distance," because neither reference discloses a controller that initiates image acquisition at discrete, position-based increments.” The examiner respectfully disagrees.
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The examiner has already addressed why the image acquiring of Shirota is equivalent to the claimed image capture. It is clear from ¶0068-¶0070 that the stage can be moved at a velocity. However since Shirota does not disclose predetermined moving velocity of the stage, Maddison was relied upon. Maddison is similar to Shirota in that it discloses acquiring images only when the stage has moved a predetermined amount. For example, see ¶0041 of Maddison:
[0041] It should be noted that although the path along which the stage will be driven is typically a continuous path, imaging may only take place along certain sub-paths or portions (referred to herein as “imaging portions” of the determined path). These imaging portions of the path are interlinked by portions of the path along which no images are captured. The camera 25 is controlled, by computer 19, to capture images whilst the stage is moving along the imaging portions of the determined path so that the images are obtained in a sequence that can be most readily processed and stored for providing a composite image of the complete specimen, as described below.
Here Maddison discloses a concept similar to Shirota where image regions are only captured/acquired at specific intervals as the stage is moved along a scan path. Maddison then provides an improvement to the generalized image capturing with a stage velocity of Shirota because Maddison describes determining an optimum velocity for image capture such that motion blurring is low and image capture is as efficient as possible (as described by ¶0051-¶0059).
Applicant further argues on page 6 of the filed remarks that the combination of Shirota and Maddison fails to disclose claim 12. Specifically, Applicant argues “Applicant further submits that the Patent Office's proposed modification is not a simple substitution of one motion-control technique for another but would require fundamentally redesigning Shirota's disclosed workflow… Because the asserted combination would require this type of redesign contrary to Shirota's teachings, the rejection lacks a reasoned motivation to combine grounded in the cited disclosures, and the obviousness rejection over Shirota in view of Maddison should be withdrawn.” The examiner respectfully disagrees.
Applicant is arguing that Maddison cannot be bodily incorporated into the system of Shirota. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Shirota suggests capturing images at predetermined intervals as a stage is moved at a velocity, but Shirota is silent on a predetermined velocity profile of the stage. Maddison discloses that a stage can be controlled according to a target velocity scheme such that the velocity can be chosen such that images are captured with high efficiency and low motion blur. A person of ordinary skill would readily appreciate that applying the teachings of Maddison to the system of Shirota suggests that the velocity of the stage of Shirota may be controlled in a manner similar to that of Maddison so the advantages of low motion blur and high efficiency can be achieved.
Applicant further argues on pages 6-7 of the filed remarks that the combination of Shirota and Miller fails to disclose claim 7. Specifically, Applicant argues “The Patent Office does not identify where in Shirota's position-based joining process the particular transformation-induced voids addressed by Miller necessarily occur or would be expected to occur. Nor does the Patent Office explain why a skilled artisan would look to Miller's transformation-gap interpolation to modify Shirota's virtual-slide creation technique. (Shirota at [0034] - [0036]). Without identifying any transformation-gap problem in Shirota that Miller is directed to solving, the rejection relies only on the general proposition that interpolation can yield a "more complete image." The examiner respectfully disagrees.
The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Again, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Miller suggests that in ¶0059-¶0060 that when combining images obtained as part of a scan and registering the images together (like the process shown in Fig.4C of Shirota), there may be data missing or insufficient. That is, Shirota clearly discloses the need to align/register images in Fig.4A through Fig.4C and Miller suggests that images captured and aligned (“transformed”) in such a manner may have voids or artifacts that result in incomplete image generation. Miller provides an improvement by interpolating any missing data that may appear in combined/aggregate scan images.
Applicant further argues on page 7 of the filed remarks that the combination of Shirota and Iwase fails to disclose claim 8. Specifically, Applicant argues “The Patent Office does not explain why a skilled artisan would modify Shirota's position-based image saving and joining approach to implement Iwase's exposure-control scheme, nor does it identify a concrete problem in Shirota that would have prompted varying exposure times between captured images… because Shirota does not disclose capturing at different exposure times and the Patent Office Action does not provide a sufficient rationale for importing Iwase's exposure-control technique into Shirota's scanning approach, claim 8 is not rendered obvious by the asserted combination." The examiner respectfully disagrees.
The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Again, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). It is acknowledged that Shirota does not disclose different exposure times. Iwase discloses that in systems where images are captured along a scan path (like the system of Shirota), adjusting the exposure time depending on determined speed can ensure that images are captured under optimal exposure conditions. That is, Iwase recognizes in ¶0002 that imaging successive scans of a sample under a constant exposure/focus setting (like the system of Shirota that does not vary exposure) may result in out-of-focus image. This implies that a system like Shirota may have similar out-of-focus regions. Iwase suggests an improvement to such systems by controlling the exposure based on velocity conditions. This results in images being captured more in-focus (and thus more properly sampled image regions) that are ready for combination or further processing.
For these reasons as a whole, Applicant’s arguments are not persuasive and the claims are rejected as outlined below.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,317,666. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
In regard to claim 1, every claim limitation within claim 1 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 10,317,666 and/or one or more dependent claims stemming therefrom. As claim 1 was found to contain no limitation unique or non-obvious when compared to the claims of U.S. Patent No. 10,317,666, the claims are considered to be not patentably distinct and are therefore rejected on the grounds of non-statutory double patenting.
In regard to claim 2, this claim is rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 10,317,666.
In regard to claim 3, every claim limitation within claim 3 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 10 of U.S. Patent No. 10,317,666 and/or one or more dependent claims stemming therefrom. As claim 3 was found to contain no limitation unique or non-obvious when compared to the claims of U.S. Patent No. 10,317,666, the claims are considered to be not patentably distinct and are therefore rejected on the grounds of non-statutory double patenting.
In regard to claims 4-11, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 10,317,666.
In regard to claim 12, every claim limitation within claim 12 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 10 of U.S. Patent No. 10,317,666 and/or one or more dependent claims stemming therefrom. As claim 12 was found to contain no limitation unique or non-obvious when compared to the claims of U.S. Patent No. 10,317,666, the claims are considered to be not patentably distinct and are therefore rejected on the grounds of non-statutory double patenting.
In regard to claims 13-20, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 10,317,666.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,895,731. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
In regard to claim 1, every claim limitation within claim 1 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 10,895,731 and/or one or more dependent claims stemming therefrom. As claim 1 was found to contain no limitation unique or non-obvious when compared to the claims of U.S. Patent No. 10,895,731, the claims are considered to be not patentably distinct and are therefore rejected on the grounds of non-statutory double patenting.
In regard to claim 2, this claim is rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 10,895,731.
In regard to claim 3, every claim limitation within claim 3 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 11 of U.S. Patent No. 10,895,731 and/or one or more dependent claims stemming therefrom. As claim 3 was found to contain no limitation unique or non-obvious when compared to the claims of U.S. Patent No. 10,895,731, the claims are considered to be not patentably distinct and are therefore rejected on the grounds of non-statutory double patenting.
In regard to claims 4-11, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 10,895,731.
In regard to claim 12, every claim limitation within claim 12 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 11 of U.S. Patent No. 10,895,731 and/or one or more dependent claims stemming therefrom. As claim 12 was found to contain no limitation unique or non-obvious when compared to the claims of U.S. Patent No. 10,895,731, the claims are considered to be not patentably distinct and are therefore rejected on the grounds of non-statutory double patenting.
In regard to claims 13-20, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 10,895,731.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,013,524. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
In regard to claim 1, every claim limitation within claim 1 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 12,013,524 and/or one or more dependent claims stemming therefrom. As claim 1 was found to contain no limitation unique or non-obvious when compared to the claims of U.S. Patent No. 12,013,524, the claims are considered to be not patentably distinct and are therefore rejected on the grounds of non-statutory double patenting.
In regard to claim 2, this claim is rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 12,013,524.
In regard to claim 3, every claim limitation within claim 3 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 9 of U.S. Patent No. 12,013,524 and/or one or more dependent claims stemming therefrom. As claim 3 was found to contain no limitation unique or non-obvious when compared to the claims of U.S. Patent No. 12,013,524, the claims are considered to be not patentably distinct and are therefore rejected on the grounds of non-statutory double patenting.
In regard to claims 4-11, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 12,013,524.
In regard to claim 12, every claim limitation within claim 12 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 9 of U.S. Patent No. 12,013,524 and/or one or more dependent claims stemming therefrom. As claim 12 was found to contain no limitation unique or non-obvious when compared to the claims of U.S. Patent No. 12,013,524, the claims are considered to be not patentably distinct and are therefore rejected on the grounds of non-statutory double patenting.
In regard to claims 13-20, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 12,013,524.
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) 1-4, 6, and 9-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shirota et al. (US 2011/0221881) (hereinafter Shirota).
In regard to claim 1, Shirota discloses a microscope scanning apparatus [¶0026; microscope main unit 2, a controller 3 that controls the microscope main unit 2 and that creates a virtual slide] comprising:
a sample holder adapted to hold a sample [¶0027; stage 6 for mounting a sample A placed on a slide glass],
a detector array for obtaining an image of the sample [¶0036; camera 25 includes a square array of CCD sensor], the detector array configured to move relative to the sample holder along a scan path [Fig.4A through Fig.4C; images of sample captured along a scan path. Fig.1; stage (6) moves the sample (A) relative the image capturing unit (10). ¶0027-¶0030; motors (relative movement mechanism) 7 a and 7 b that move the stage 6 in two horizontal directions perpendicular to each other. ¶0045-¶0046; image capturing area is shifted from right to left along the direction of an arrow (mainly the X direction), so that enlarged images G are sequentially stored. ¶0049; observer can move the objective lens 9 and the stage 6 relative to each other using the operation input unit 4 while viewing the display unit 5]; and
a controller [¶0026; virtual-slide creating device] comprising a position sensor, wherein the controller is configured to monitor the position of the detector array relative to the sample holder [¶0029; sensors 8 a and 8 b are configured to detect the position of the stage 6 along the X direction and along the Y direction, respectively, and to individually send position information representing the results to the controller 3] and to trigger image capture by the detector array in accordance with said monitored position while the detector array is in motion [¶0033-¶0035; controller 3 is configured to store an enlarged image in the storage unit 12 in association with the position information of the stage 6 when the movement distance in the X direction exceeds the threshold for the X direction or the movement distance in the Y direction exceeds the threshold for the Y direction. ¶0048-¶0052; image saving unit 12 monitors the amount of relative movement, and saves an enlarged image acquired by the image capturing unit 10 each time a relative movement of a predetermined distance occurs... enlarged image G is automatically saved each time the objective lens 9 and the stage 6 are moved relative to each other by a predetermined distance].
Shirota discloses a microscope system comprising an image capturing unit (CCD) and a stage wherein a sample is loaded onto a slide and placed on the stage for subsequent scanning. The slide/sample is scanned along a scan path wherein the stage's position is monitored and images are captured/saved when it is determined that the stage has moved a predetermined distance threshold from a previous image capture position.
In regard to claim 2, Shirota discloses the microscope scanning apparatus of claim 1. Shirota further discloses,
further comprising a drive assembly configured to move the detector array relative to the sample holder [¶0027-¶0028].
In regard to claim 3, Shirota discloses a method [¶0026-¶0027; microscope main unit 2, a controller 3 that controls the microscope main unit 2 and that creates a virtual slide... stage 6 for mounting a sample A... image capturing unit 10, such as a CCD, that captures the light collected by the objective lens 9 to acquire an enlarged image of the sample A] for imaging a sample comprising:
(a) moving one of a sample holder or a detector array along a first scan path [Fig.4A through Fig.4C; images of sample captured along a scan path. Fig.1; stage (6) moves the sample (A) relative the image capturing unit (10). ¶0027-¶0030; motors (relative movement mechanism) 7 a and 7 b that move the stage 6 in two horizontal directions perpendicular to each other. ¶0045-¶0046; image capturing area is shifted from right to left along the direction of an arrow (mainly the X direction), so that enlarged images G are sequentially stored. ¶0049; observer can move the objective lens 9 and the stage 6 relative to each other using the operation input unit 4 while viewing the display unit 5]; and
(b) capturing a plurality of images of a sample positioned within the sample holder while the sample holder is moved relative to the detector array or while the detector array is moved relative to the sample holder [¶0068-¶0069; relative moving velocity is less than the predetermined threshold, so that an enlarged image G is acquired by the image capturing unit 10 each time a relative movement by the predetermined distance occurs];
wherein each image of the plurality of images is captured after the sample holder or the detector array has moved a predetermined distance along the first scan path [¶0033-¶0035; controller 3 is configured to store an enlarged image in the storage unit 12 in association with the position information of the stage 6 when the movement distance in the X direction exceeds the threshold for the X direction or the movement distance in the Y direction exceeds the threshold for the Y direction. ¶0048-¶0052; image saving unit 12 monitors the amount of relative movement, and saves an enlarged image acquired by the image capturing unit 10 each time a relative movement of a predetermined distance occurs... enlarged image G is automatically saved each time the objective lens 9 and the stage 6 are moved relative to each other by a predetermined distance. ¶0068-¶0069], wherein the predetermined distance between the capturing of each image of the plurality of images is about equal [Fig.4A through Fig.4C, Fig.8; capture interval equivalent to about the image capturing unit's field of view. ¶0027; detect the position of the stage 6 moved by the motors 7 a and 7 b relative to an origin (relative position information), an objective lens 9 that faces the sample A and that collects light from the sample A, and an image capturing unit 10, such as a CCD, that captures the light collected by the objective lens 9 to acquire an enlarged image of the sample A. ¶0038-¶0039. ¶0044-¶0048], but wherein the capturing of each image of the plurality of images occurs at the same or different time internals [¶0048-¶0049, ¶0069].
In regard to claim 4, Shirota discloses the method of claim 3. Shirota further discloses,
wherein at least two images of the plurality of images are captured at different time intervals [Fig.4A through Fig.4C. ¶0048-¶0050].
In regard to claim 6, Shirota discloses the method of claim 3. Shirota further discloses,
further comprising combining the plurality of images into an aggregate image [¶0034-¶0036].
In regard to claim 9, Shirota discloses the method of claim 3. Shirota further discloses,
further comprising offsetting the sample a predetermined distance from the first scan path, wherein the sample is offset in a direction perpendicular to the first scan path [¶0027-¶0028, ¶0034, ¶0044-¶0046. Fig.4A through Fig.4C].
In regard to claim 10, Shirota discloses the method of claim 9. Shirota further discloses,
further comprising repeating steps (a) and (b) along a second scan path [¶0027-¶0028, ¶0045-¶0046. Fig.4A through Fig.4C].
In regard to claim 11, Shirota discloses the method of claim 3. Shirota further discloses,
wherein the predetermined distance is approximately equal to a field of view of the detector array [¶0027-¶0028, ¶0032-¶0035, Fig.4A through Fig.4C].
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.
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.
Claim(s) 5, 12, 13, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shirota et al. (US 2011/0221881) in view of Maddison et al. (US 2008/0285795) (hereinafter Maddison).
In regard to claim 5, Shirota discloses the method of claim 3. Shirota does not explicitly disclose wherein the sample holder or the detector array is moved according to a predetermined target velocity profile. However Maddison discloses,
wherein the sample holder or the detector array is moved according to a predetermined target velocity profile [¶0051-¶0056; stage is moved under control of computer 19 to steadily increase the velocity of the stage up to the optimum velocity Vo in the minimum time... optimum velocity Vo for the stage 5 is calculated. ¶0020].
Maddison discloses a microscope system for acquiring images of a sample loaded onto a slide wherein a camera captures images of the slide/sample as a motorized stage translates the slide/sample wherein coordinates of the stage containing the slide/sample are tracked relative to the camera and imaging is performed at determined distances/intervals such that captured images are combined to produce a mosaic image, similar to Shirota. Maddison further discloses that images are captured during an acceleration period, a constant motion period, and a deceleration period. For example, as can be seen in Fig.3A and Fig.4, during the start of a scan when the stage/slide is accelerating, images are captured, and during the end of a scan when the stage/slide is decelerating, images are similarly captured. Maddison describes setting the capture distance/interval such that there is minimal overlap between the images.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the method disclosed by Shirota with the target velocity as disclosed by Maddison in order to provide movement of the stage that is smooth throughout image acquisition thereby achieving consistently clear images with desired overlap [Maddison ¶0051-¶0059].
In regard to claim 12, Shirota discloses a method for imaging a sample with a microscope scanner [¶0026; microscope main unit 2, a controller 3 that controls the microscope main unit 2 and that creates a virtual slide] comprising a motor [¶0027; motors (relative movement mechanism) 7 a and 7 b that move the stage 6], a scan head including a detector array [¶0027; capturing unit 10, such as a CCD, that captures the light collected by the objective lens 9. Fig.1], a sample holder [¶0027; stage 6 for mounting a sample A placed on a slide glass], and a controller communicatively coupled to the scan head and/or of the sample holder [¶0026; virtual-slide creating device 1 according to this embodiment includes a microscope main unit 2, a controller 3], the method comprising:
(a) positioning the scan head with the motor to align the scan head with an edge of a scan area [¶0031-¶0032; movement instruction signals input from the operation input unit 4 to the individual motors 7 a and 7 b so that the stage 6 will be moved horizontally by distances corresponding to the movement instruction signals. Fig.1, Fig.4A];
(b) moving the scan head with the motor in an x-direction along a scan path [Fig.4A through Fig.4C; images of sample captured along a scan path. Fig.1; stage (6) moves the sample (A) relative the image capturing unit (10). ¶0027-¶0030; motors (relative movement mechanism) 7 a and 7 b that move the stage 6 in two horizontal directions perpendicular to each other. ¶0045-¶0046; image capturing area is shifted from right to left along the direction of an arrow (mainly the X direction), so that enlarged images G are sequentially stored. ¶0049; observer can move the objective lens 9 and the stage 6 relative to each other using the operation input unit 4 while viewing the display unit 5] according to a predetermined velocity [¶0068-¶0069; velocity detecting unit that calculates the velocity of the stage 6 (relative moving velocity)];
(c) monitoring with the controller the position of the scan head [¶0048; When the objective lens 9 and the stage 6 have been moved relative to each other, the position detecting units 8 a and 8 b detect relative position information. ¶0029]; and
(d) capturing one or more images of the sample held by the sample holder each time the scan head moves a predetermined distance[¶0033-¶0035; controller 3 is configured to store an enlarged image in the storage unit 12 in association with the position information of the stage 6 when the movement distance in the X direction exceeds the threshold for the X direction or the movement distance in the Y direction exceeds the threshold for the Y direction. ¶0048-¶0052; image saving unit 12 monitors the amount of relative movement, and saves an enlarged image acquired by the image capturing unit 10 each time a relative movement of a predetermined distance occurs... enlarged image G is automatically saved each time the objective lens 9 and the stage 6 are moved relative to each other by a predetermined distance].
Shirota does not explicitly disclose accelerating the scan head with the motor in an x-direction along a scan path according to a predetermined target velocity profile. However Maddison discloses,
(a) positioning the scan head with the motor to align the scan head with an edge of a scan area [¶0043; stage controller 17, the microscope stage 5 is driven along a first portion of the determined path… slide is aligned carefully on the stage. ¶0057; starting and finishing positions at the beginning and end of a row . Fig.1, Fig.3B];
(b) accelerating the scan head with the motor in an x-direction along a scan path [¶0051-¶0053; in the preferred embodiment, images are acquired during the acceleration and deceleration stages respectively at the beginning and end of a row. Fig.3, Fig.4] according to a predetermined target velocity profile [¶0051-¶0056; stage is moved under control of computer 19 to steadily increase the velocity of the stage up to the optimum velocity Vo in the minimum time... optimum velocity Vo for the stage 5 is calculated. ¶0020];
(c) monitoring with the controller the position of the scan head [¶0039-¶0042; Computer 19 is then able to determine the path along which the stage 5 will be driven, between the starting position and the finishing position... under control of the computer 19, the stage 5 is then automatically positioned to the starting position. ¶0046; computer 19 considers whether the imaging process is complete, that is, whether the coordinates of the stage are at the finishing position. ¶0054; monitor and control the velocity of the microscope stage. computer 19 determines that the scan is complete, that is, the stage has reached the finishing position].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the apparatus disclosed by Shirota with the imaging while the stage/slide is accelerating and/or decelerating as disclosed by Maddison in order to reduce constraints on camera synchronization and ensure the lateral ends of image strips are captured in a quick manner [Maddison ¶0005-¶0013, ¶0051-¶0056]. As disclosed by Maddison, capturing images during the ramp-up time and ramp-down time allows for rapid imaging of a complete scan row without requiring strict synchronization of the stage and the camera. It additionally would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the method disclosed by Shirota with the target velocity as disclosed by Maddison in order to provide movement of the stage that is smooth throughout image acquisition thereby achieving consistently clear images with desired overlap [Maddison ¶0051-¶0059].
In regard to claim 13, Shirota in view of Maddison discloses the method of claim 12. Shirota in view of Maddison further discloses,
further comprising calculating an instantaneous velocity of the scan head with the controller as it is accelerated along the scan path [Shirota ¶0068-¶0070, Maddison ¶0051-¶0053].
See claim 12 for motivation to combine.
In regard to claim 19, Shirota in view of Maddison discloses the method of claim 12. Shirota further discloses,
further comprising generating an aggregate image from the captured one or more images [¶0034-¶0036].
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shirota et al. (US 2011/0221881) in view of Miller (US 2014/0193061).
In regard to claim 7, Shirota discloses the method of claim 6. Shirota does not explicitly disclose, further comprising interpolating missing data in the aggregate image. However Miller discloses,
further comprising interpolating missing data in the aggregate image [¶0059-¶0060; When images are shifted by different amounts as a result of a transformation, there can be overlaps or voids between adjacent images after the transformation is applied ... interpolation may be used to supply the missing values as the gaps are generally small].
Miller discloses a slide scanning system for scanning an entire slide by moving the slide relative to a camera/detector and capturing image data of the slide at various positions. The image data is combined to form a single image, like Shirota and Maddison. As further noted above, Miller discloses that if there are voids/gaps in the single image, interpolation can be used to fill in the voids with data.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the apparatus disclosed by Shirota with the interpolation as disclosed by Miller in order to produce a more complete image by inferring areas that are void of relevant data [Miller ¶0059-¶0060]. As disclosed by Miller and as can readily be appreciated by one of ordinary skill, depending on how images are combined to form a single image, gaps and voids may occur between images and by interpolating this missing areas, a more complete image free from visual artifacts can be generated.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shirota et al. (US 2011/0221881) in view of Iwase et al. (US 2016/0077322) (hereinafter Iwase).
In regard to claim 8, Shirota discloses the method of claim 3. Shirota does not explicitly disclose, wherein at least two images of the plurality of images are captured at different exposure times. However Iwase discloses,
wherein at least two images of the plurality of images are captured at different exposure times
[¶0051-¶0054; start of exposure of the pixel column 31 is controlled according to the position of a region other than the end parts of the divisional region (regions abutting on the boundaries of the divisional regions 33) and the moving speed (or acceleration of movement) of the sample S within the field V of the objective lens 25... exposure time in each pixel column 31 is set according to at least the width of the predetermined part Sa of the sample S in the scan direction and the moving speed of the predetermined part Sa of the sample S within the field V of the objective lens 25].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the apparatus disclosed by Shirota with the adapting of exposure times as disclosed by Iwase in order to achieve configurable image tile regions for any portion of the sample [Iwase ¶0051-¶0054, ¶0059-¶0066]. As disclosed by Iwase, it may be desirable to set a predetermined part of the sample for imaging and by changing the exposure depending on speed, the system can ensure any predetermined part of the sample is properly imaged as desired.
Claim(s) 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shirota (US 2011/0221881) in view of Maddison (US 2008/0285795) in view of Gossage et al. (US 2015/0124119) (hereinafter Gossage).
In regard to claim 15, Shirota in view of Maddison discloses the method of claim 12. Neither Shirota nor Maddison explicitly disclose, wherein the controller computes an exposure time for the capturing of the one or more images as the as the scan head is accelerated along the scan path. However Gossage discloses,
wherein the controller computes an exposure time for the capturing of the one or more images as the as the scan head is accelerated along the scan path [¶0027-¶0029; triggering period is equal to a desired exposure time… motion and/or position of the sample is measured in order to determine the exposure time].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the apparatus disclosed by Shirota in view of Maddison with the computation of exposure time as disclosed by Gossage in order to produce composite images with precise spatial registration and correct exposure [Gossage Abstract ¶0003-¶0007, ¶0028].
In regard to claim 16, Shirota in view of Maddison in view of Gossage discloses the method of claim 15. Shirota in view of Maddison in view of Gossage further discloses,
wherein the exposure time for capturing the one or more images is shortened as the velocity of the scan head increases [Gossage ¶0023].
See claim 15 for motivation to combine.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shirota (US 2011/0221881) in view of Maddison (US 2008/0285795) in view of Miller (US 2014/0193061).
In regard to claim 20, Shirota in view of Maddison discloses the method of claim 19. Neither Shirota nor Maddison explicitly disclose, further comprising correcting for missing data in the aggregate image using an interpolation technique. However Miller discloses,
further comprising correcting for missing data in the aggregate image using an interpolation technique [¶0059-¶0060; When images are shifted by different amounts as a result of a transformation, there can be overlaps or voids between adjacent images after the transformation is applied ... interpolation may be used to supply the missing values as the gaps are generally small].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the apparatus disclosed by Shirota in view of Maddison with the interpolation as disclosed by Miller in order to produce a more complete image by inferring areas that are void of relevant data [Miller ¶0059-¶0060]. As disclosed by Miller and as can readily be appreciated by one of ordinary skill, depending on how images are combined to form a single image, gaps and voids may occur between images and by interpolating this missing areas, a more complete image free from visual artifacts can be generated.
Allowable Subject Matter
Claims 14, 17, and 18 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if terminal disclaimer(s) are filed to overcome the double patenting rejections noted herein.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/REBECCA A VOLENTINE/Primary Examiner, Art Unit 2483 May 27, 2026
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