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 .
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.
Claim 6 is 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.
Regarding Claim 6, the limitation “wherein the barrier extension is less than 10% of an individual microlens beam extension at the position of the light barrier element” is unclear. Specifically, it appears that the beam focuses at the light barrier element (e.g., from Claim 1, “the light barrier element being positioned at a lens system focal point, where light . . . is focused”). If the size of the “individual microlens beam extension at the position of the light barrier element” as claimed refers to the same focal point, which it appears to, the size would be negligible, and it is not clear how a barrier extension of the light barrier element could be effectively made or used at such a small size. Applicant’s specification appears to teach that “at most 10% of the desired light of the microlens beam” is blocked/affected, and/or that “the barrier extension is such that less than 10% of the power of an individual microlens beam is blocked/affected at the position of the light barrier element” (paragraph [0019] of Applicant’s specification as-filed, paragraph [0018] published). These recitations in Applicant’s specification are different than what is recited in Claim 6. It is unclear specifically what Claim 6 is referencing by the claimed barrier extension being “less than 10% of an individual microlens beam extension at the position of the light barrier element.”
Appropriate clarification and correction are required.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
Claims 1–5, 7–11, and 13–15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2008/0218849 to Uhl et al.
Regarding Claim 1, Uhl would have rendered obvious (e.g., Figs. 4–10 and their description) a microscope (where the confocal devices described by Uhl are an improvement to confocal devices used in prior art microscopes, e.g., paragraphs [0004]–[0014], reasonably suggesting application of the disclosed confocal devices within a microscope), comprising: a collimated light source, emitting a substantially collimated excitation light beam (e.g., paragraph [0063], various light sources, including collimating the light from the light source); a rotatable microlens disk 38, comprising a plurality of microlenses 36, with each of the plurality of microlenses focusing a portion of the substantially collimated excitation light beam towards a respective microlens focal point (e.g., claim 4); a beam-forming lens system and a microscope objective, with the beam-forming lens system and the microscope objective jointly focusing a respective portion of the substantially collimated excitation light beam, travelling through a respective microlens focal point, at a respective sample illumination point (e.g., paragraphs [0049]–[0050], light passing through discs 38 and 22 onto focal plane 48 and light from the sample are imaged; light from sample 12 is collected by objective 10); and a light barrier element (where disc 22 includes opening pattern 24, and the remaining portions of disc 22 function to block light; also paragraph [0064]), arranged within the beam-forming lens system or arranged between the beam-forming lens system and the microscope objective (Figs. 4–10), the light barrier element being positioned at a lens system focal point (claim 4, focal point is within openings 24 of disc 22), where light of the substantially collimated excitation light beam that passes the rotatable microlens disk in between the plurality of microlenses is focused (paragraphs [0049]–[0050]; claim 4).
Regarding Claim 2, Uhl would have rendered obvious wherein the light barrier element comprises an intensity reducing element, in particular a semi-transparent element or an opaque element, and/or a phase shifting element (e.g., disc 22 described as a Nipkow disc; also paragraph [0077], openings may be physical openings or holes in a mask).
Regarding Claim 3, Uhl would have rendered obvious wherein the light barrier element is a light barrier portion of a generally transparent mask (e.g., Nipkow disc 22; paragraph [0077]).
Regarding Claim 4, Uhl would have rendered obvious wherein the light barrier element is arranged on a central axis through the beam-forming lens system and the microscope objective (e.g., Figs. 4–5).
Regarding Claim 5, Uhl would have rendered obvious wherein the light barrier element has a barrier extension around the lens system focal point, wherein the light barrier element in particular has a barrier extension of less than 1 mm, further in particular of less than 0.5 mm, yet further in particular of less than 0.2 mm (e.g., at least Fig. 6A and paragraph [0077], where selecting the specific dimensions would have been obvious as a matter of design choice based on desired size of the overall system, MPEP § 2144.04).
Regarding Claim 7, Uhl would have rendered obvious wherein the light barrier element is arranged at a focal plane of the microscope objective, in particular at a focal plane of the microscope objective between the beam-forming lens system and the microscope objective (e.g., paragraph [0050] and Figs. 4–7).
Regarding Claim 8, Uhl would have rendered obvious wherein the beam-forming lens system comprises a relay lens and wherein the light barrier element is arranged at a focal plane of the relay lens (Figs. 4–8).
Regarding Claim 9, Uhl would have rendered obvious wherein the plurality of microlenses are between 200 μm and 1200 μm, in particular between 500 μm and 1000 μm, further in particular between 700 μm and 900 μm, in cross-sectional extension; and/or wherein the fill factor of microlenses on the microlens disk is between 30% and 80%, in particular between 40% and 70% (e.g., Figs. 11A–C; also where selecting specific sizes and fill factor would have been obvious as a matter of design choice, taking into account desired overall size and effectiveness of the system, yielding predictable results, absent evidence of criticality or otherwise unobvious results from the claim features, MPEP § 2144.04).
Regarding Claim 10, Uhl would have rendered obvious wherein the rotatable microlens disk is a transparent disk (e.g., at least where the microlens disk is designed to pass light through the microlens array to control properties of the transmitted light, such that selecting a transparent disk would have been an obvious design choice).
Regarding Claim 11, Uhl would have rendered obvious wherein the rotatable microlens disk is made by additive manufacturing, and/or wherein the rotatable microlens disk is made from polydimethylsiloxane (PDMS) or poly-lactic acid (PLA) or polymethyl methacrylate (PMMA) (where using known manufacturing methods or common materials to form the microlens disk would have been obvious as a matter of design choice, yielding predictable results, absent evidence of criticality or otherwise unobvious results from the claim features).
Regarding Claim 13, Uhl would have rendered obvious wherein the collimated light source comprises a laser light source, in particular a laser light source capable of creating a non-linear effect at a sample plane of the microscope, further in particular a pulsed laser light source (e.g., paragraph [0063]).
Regarding Claim 14, Uhl would have rendered obvious wherein the microscope further comprises: a dichroic mirror arranged between the beam-forming lens system and the microscope objective, a first tube lens, and a first digital camera, wherein the dichroic mirror, the first tube lens and the first digital camera are arranged such that light, emitted from a particular sample illumination point towards the microscope objective, passes through the microscope objective, is reflected at the dichroic mirror towards the first tube lens, and is focused by the first tube lens at a respective image point at the first digital camera; and/or wherein the microscope further comprises, on a back side of a sample plane: a back side microscope objective, a second tube lens, and a second digital camera, wherein the back side microscope objective, the second tube lens and the second digital camera are arranged such that light, emitted from a particular sample illumination point towards the back side microscope objective, passes through the back side microscope objective and is focused by the second tube lens at a respective image point at the second digital camera (e.g., see description of background microscope systems, paragraphs [0004]–[0012]; also paragraph [0066], where selecting known components and configurations of microscope systems would have been obvious as a matter of design choice, yielding predictable results, absent evidence of criticality or otherwise unobvious results).
Regarding Claim 15, Uhl would have rendered obvious (e.g., Figs. 4–10 and their corresponding description) a method of operating a microscope (where the confocal devices described by Uhl are an improvement to confocal devices used in prior art microscopes, e.g., paragraphs [0004]–[0014], reasonably suggesting application of the disclosed confocal devices within a microscope) that comprises a rotatable microlens disk 38, the method comprising: emitting a substantially collimated excitation light beam from a collimated light source towards the rotatable microlens disk (e.g., paragraph [0063], various light sources, including collimating the light from the light source); forming a plurality of microlens beams via a plurality of microlenses of the rotatable microlens disk from the substantially collimated excitation light beam (e.g., paragraphs [0049]–[0050], light passing through discs 38 and 22 onto focal plane 48 and light from the sample are imaged; light from sample 12 is collected by objective 10; claim 4); focusing the light of the plurality of microlens beams at respective sample illumination points via a beam-forming lens system and a microscope objective (e.g., paragraphs [0049]–[0050], light passing through discs 38 and 22 onto focal plane 48 and light from the sample are imaged; light from sample 12 is collected by objective 10; claim 4); and inhibiting light of the substantially collimated excitation light beam that passes the rotatable microlens disk in between the plurality of microlenses via a light barrier element, arranged at a lens system focal point within the beam-forming lens system or arranged at a lens system focal point between the beam-forming lens system and the microscope objective (where disc 22 includes opening pattern 24, and the remaining portions of disc 22 function to block light; also paragraph [0064]; claim 4, focal point is within openings 24 of disc 22; and paragraphs [0049]–[0050]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Uhl in view of U.S. Patent Application Publication No. 2020/0064611 to Shroff et all.
Regarding Claim 12, Uhl does not explicitly disclose wherein the microscope is free of a pinhole disk.
Shroff discloses a microscope system, and teaches that a pinhole disk may be replaced with a digital micromirror device (DMD) or spatial light modulator (SLM) as a suitable configuration.
It would have been obvious to one of ordinary skill in the art at the time of effective filing to modify the device of Uhl to replace the pinhole disk with a DMD or SLM, as suggested by Shroff, as a suitable configuration (e.g., MPEP §§ 2144.06–07), thus achieving the claimed “wherein the microscope is free of a pinhole disk”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN CROCKETT whose telephone number is (571)270-3183. The examiner can normally be reached M-F 8am to 5pm.
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/RYAN CROCKETT/ Primary Examiner, Art Unit 2871