1DETAILED 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 .
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.
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Claims 14 – 31 and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 7, 9 and 14 of U.S. Patent No. 12,025,557 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because method and apparatus claims of 14 – 31 and 33 in the present application is anticipated by an apparatus claim 1 – 7, 9, and 14 in the above U.S. Patent.
Independent Claim 14 of the present application recites A method in claim 1 US Pat. 12,025,557 B2 recites a system for classifying or characterizing a sample, the method comprising:
irradiating Claim 1 of the above patent recites a light source; see claim 1 (a) a sample with at least one light pulse at a predetermined wavelength to cause the sample to produce a responsive optical signal;
splitting Claim 1 of the above patent recites a light collection element as splitting the responsive optical signal the responsive optical signal at pre-determined wavelength ranges via a plurality of filters recited in Claim 1(b) to obtain a plurality of temporally distinct spectral bands;
detecting Claim 1 of the above patent recites a single pixel detector in Claim 1(b) the plurality of temporally distinct spectral bands with a single pixel collection element; and
displaying Claim 1 of the above patent recites a processor configured to direct a display in Claim 1(c) time-resolved fluorescence spectroscopic information of the plurality of temporally distinct spectral bands alongside or overlaid on an image of the biological sample.
Therefore, a method claim 14 of the present application is anticipated by the apparatus claim 1 of the above patent.
Claim 15 of the present application recites wherein the responsive optical signal is split at pre- determined wavelength ranges with a filter wheel Claim 1 of the above patent recites a filter wheel in claim 1(b), wherein the filter wheel comprises a plurality of filters. Therefore, method claim 15 is anticipated apparatus claim 1 of the above patent.
Claim 16 of the present application recites wherein the plurality of temporally distinct spectral bands correspond to the plurality of filters. Claim 1(b) of the above patent recites wherein the plurality of temporally distinct spectral bands correspond to the plurality of filters. Therefore, method claim 16 is anticipated by apparatus claim 1 of the above patent.
Claim 17 of the present application recites wherein each of the temporally distinct spectral bands is time delayed with respect to another. Claim 2 of the above patent recites the same limitation. Therefore, method claim 17 is anticipated by apparatus claim 2 of the above patent.
Claim 18 of the present application recites wherein the responsive optical signal comprises one or more of a fluorescence spectrum, a Raman spectrum, an ultraviolet-visible spectrum, or an infrared spectrum. Claim 3 of the above patent recites the same limitation. Therefore, method claim 18 is anticipated by apparatus claim 3 of the above patent.
Claim 19 of the present application recites wherein the single pixel collection element comprises a photomultiplier tube. Claim 4 of the above patent recites the same limitation. Therefore, method claim 19 is anticipated by apparatus claim 4 of the above patent.
Claim 20 of the present application recites characterizing the sample based on at least the plurality of temporally distinct spectral bands using time-resolved fluorescence spectroscopy. Claim 5 of the above patent recites wherein the biological sample is characterized by determining one or more of a concentration or a distribution of a molecule in the biological sample based on the plurality of temporally distinct spectral bands. Claim 1 of the above patent also recites time-resolved fluorescence spectroscopy. Therefore, method claim 19 is anticipated by apparatus claim 5 and 1 of the above patent.
Claim 21 of the present application recites wherein characterizing the sample comprises determining one or more of a concentration or a distribution of a molecule in the sample based on the plurality of temporally distinct spectral bands. Claim 5 of the above patent recites the same limitation. Therefore, method claim 21 is anticipated by apparatus claim 5 of the above patent.
Claim 22 of the present application recites wherein the molecule comprises an exogenous fluorescent molecule or an endogenous fluorescent molecule. Claim 6 of the above patent recites the same limitation. Therefore, method claim 22 is anticipated by apparatus claim 6 of the above patent.
Claim 23 of the present application recites wherein the sample is characterized in about 100 milliseconds (ms) or less. Claim 9 of the above patent recites the same limitation. Therefore, method claim 23 is anticipated by apparatus claim 9 of the above patent.
Independent Claim 24 of the present application recites a system Claim 1 of the above patent recites the same system for classifying or characterizing a biological sample, the system comprising:
a probe configured to irradiate a biological sample with at least one light pulse of a light source, wherein the biological sample generates a responsive optical signal in response to the at least one light pulse in claim 1(a) of the above patent, instead of “ a probe” , “a light source” is claimed in order to configured to perform the same function by “a probe”: “irradiate a biological sample with at least one light pulse of a light source, wherein the biological sample generates a responsive optical signal in response to the at least one light pulse”. The only difference between “a probe” and “a light source” is wording with the exact same function;
a signal collection element, wherein the signal collection element comprises a wavelength splitter coupled to a single pixel detector, wherein the signal collection element is configured to: (i) receive the responsive optical signal from the biological sample, (ii) temporally split the responsive optical signal into a plurality of temporally distinct spectral bands, and (iii) detect the temporally distinct spectral bands with the single pixel detector Claim 1(b) of the above patent recites the same elements which performs the “receive”, “temporally split”, and “detect” ; and
a processor Claim 1(c) recites this processor with the same function. coupled to the signal collection element and configured to: (i) characterize the biological sample using time-resolved fluorescence spectroscopy in response to the plurality of temporally distinct spectral bands, and (ii) direct a display in communication with the processor to show spectroscopic information of the plurality of temporally distinct spectral bands alongside or overlaid on an image of the biological sample. Therefore, claim 24 of the present application is anticipated by claim 1 of the above claim.
Claim 24 of the present application recites wherein each of the temporally distinct spectral bands is time delayed with respect to another. Claim 2 of the above patent recites the same limitation. Therefore, Claim 24 of present application anticipated by claim 2 of the above patent.
Claim 26 of the present application recites wherein the responsive optical signal comprises one or more of a fluorescence spectrum, a Raman spectrum, an ultraviolet-visible spectrum, or an infrared spectrum. Claim 3 of the above patent recites the same limitation. Therefore, method claim 16 is anticipated by apparatus claim 3 of the above patent.
Claim 27 of the present application recites wherein the single pixel detector comprises a photomultiplier tube. Claim 4 of the above patent recites the same limitation. Therefore, method claim 27 is anticipated by apparatus claim 4 of the above patent.
Claim 28 of the present application recites wherein the biological sample is characterized by determining one or more of a concentration or a distribution of a molecule in the biological sample based on the plurality of temporally distinct spectral bands. Claim 5 of the above patent recites the same limitation. Therefore, method claim 28 is anticipated by apparatus claim 5 of the above patent.
Claim 29 of the present application recites wherein the molecule comprises an exogenous fluorescent molecule. Claim 6 of the above patent recites the same limitation. Therefore, method claim 29 is anticipated by apparatus claim 6 of the above patent.
Claim 30 of the present application recites wherein the molecule comprises an endogenous fluorescent molecule. Claim 7 of the above patent recites the same limitation. Therefore, method claim 30 is anticipated by apparatus claim 7 of the above patent.
Claim 31 of the present application recites wherein the sample is characterized in about 100 milliseconds (ms) or less. Claim 9 of the above patent recites the same limitation. Therefore, method claim 31 is anticipated by apparatus claim 9 of the above patent.
Claim 33 of the present application recites wherein the probe comprises a fiber optic. Claim 14 of the above patent recites a fiber optic. Therefore, method claim 33 is anticipated by apparatus claim 14 of the above patent.
Allowable Subject Matter
Claims 14 – 31 and 33 would be allowable if rewritten or amended to overcome the rejection(s) under Double Patenting, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to independent claim 1, US 6,373,073 B1 teaches a method for classifying or characterizing a sample, the method comprising:
irradiating a sample with at least one light pulse at a predetermined wavelength to cause the sample to produce a responsive optical signal; but the prior art of record fails to teach or reasonably suggest:
splitting the responsive optical signal at pre-determined wavelength ranges to obtain a plurality of temporally distinct spectral bands; detecting the plurality of temporally distinct spectral bands with a single pixel collection element; and displaying time-resolved fluorescence spectroscopic information of the plurality of temporally distinct spectral bands alongside or overlaid on an image of the biological sample.
With respect to independent claim 24, the prior art of record fails to teach or reasonably suggest:
wherein the signal collection element is configured to: (i) receive the responsive optical signal from the biological sample, (ii) temporally split the responsive optical signal into a plurality of temporally distinct spectral bands, and (iii) detect the temporally distinct spectral bands with the single pixel detector; and a processor coupled to the signal collection element and configured to: (i) characterize the biological sample using time-resolved fluorescence spectroscopy in response to the plurality of temporally distinct spectral bands, and (ii) direct a display in communication with the processor to show spectroscopic information of the plurality of temporally distinct spectral bands alongside or overlaid on an image of the biological sample.
Conclusion
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KIHO KIM, Ph.D.
Primary Examiner
Art Unit 2884
/Kiho Kim/Primary Examiner, Art Unit 2884