DETAILED ACTION
This office action is in response to the application filed on 06/03/2024. Claims 1-15 and 17 are pending and are examined.
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 .
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
The reference(s) listed on the Information Disclosure Statement(s) submitted on 08/27/2024 and 10/20/2025 has/have been considered by the examiner (see attached PTO-1449).
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, 14-15, and 17 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 and 10-11 of copending Application No. 18715754 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because not only the scope of the features of the claims is the same, but also, for instance, the independent claims of the instant application are broader in scope than the corresponding claims of copending Application No. 18715754.
Examiner notes that the broader “system” of Claim 14 in the instant application is anticipated by using the “microscope control arrangement” in Claims 1 and 10-11 of copending Application No. 18715754 as an obvious variant.
Examiner notes that the broader “method” of Claim 15 in the instant application is anticipated by using the “microscope control arrangement” in Claims 1 and 10-11 of copending Application No. 18715754 as an obvious variant.
Examiner notes that the broader “non-transitory computer-readable medium” of Claim 17 in the instant application is anticipated by using the “microscope control arrangement” in Claims 1 and 10-11 of copending Application No. 18715754 as an obvious variant.
Examiner further notes that any minor differences to the wording of the claims are merely a matter of semantics and do not carry significant patentable weight.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1, 3-12, 14-15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Walle-Jensen et al., US Patent Application Publication No.: 2022/0087518 A1, hereby WalleJensen, in view of Carl Zeiss Microscopy GMBH, "LSM Software ZEN 2011 - Quick Guide" (2011), hereby Zeiss.
WalleJensen discloses the invention substantially as claimed. Regarding Claims 1, 14-15, and 17, WalleJensen discloses a microscope control arrangement, a microscope system, a method for providing microscope control parameters, and a non-transitory computer-readable medium (Figs. 1-7), comprising:
“one or more processors, and one or more storage devices, wherein the one or more processors are (Figs. 1-7, and [0062]-[0063]) configured to
process fluorophore information indicating one or more fluorophores (Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]),
derive control parameters based on the fluorophore information (Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]), and
render a graphical user interface on a display device, the graphical user interface including one or more fluorophore control widgets corresponding to the one or more fluorophores indicated by the fluorophore information (Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]),
wherein each respective fluorophore control widget comprises a first widget zone providing a user feedback indicating the corresponding fluorophore and a . . . widget zone indicating an . . . intensity associated with the corresponding fluorophore (Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]).”
However, although WalleJensen suggests the claimed second widget zone indicating an illumination intensity associated with the corresponding fluorophore, Zeiss does expressly disclose the following:
“. . . and a second widget zone indicating an illumination intensity associated with the corresponding fluorophore (Figs. 14-15 and 20, and pages 13-14, disclosing a “Smart Setup” tool configures all the system hardware for a chosen set of dyes, and simply choose the dyes you want to use if your experiment from the list; Fig. 20 further disclosing user interface “Channels”, including list in upper part of the channels tool, “DAPI” and “Cy3”; Fig. 20, further disclosing sliders for lasers “488” and “555” corresponding to “DAPI” and “Cy3” in the list of channels).”
Accordingly, before the effective filing date, it would have been obvious to one of ordinary skill in the art, having the teachings of WalleJensen and Zeiss (hereby WalleJensen-Zeiss), to modify a microscope control arrangement, a microscope system, a method for providing microscope control parameters, and a non-transitory computer-readable medium of WalleJensen to use the claimed second widget zone indicating an illumination intensity associated with the corresponding fluorophore as in Zeiss. The motivation for doing so would have been to create the advantage of providing an intuitive, user-friendly interface which can be used for almost all standard applications while configuring all the system hardware for a chosen set of dyes (see Zeiss, Figs. 14-15 and 20, and pages 13-14).
Regarding Claim 3, WalleJensen-Zeiss discloses:
“wherein the one or more processors are configured to receive a user input (WalleJensen, Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]) in different input modes (Zeiss, Figs. 14-15 and 20, and pages 13-14; Fig. 20, visually disclosing moving laser intensity sliders via mouse drag and drop as an input mode which is translated to an interaction with one or more fluorophore control widget by adjusting the applied and displayed laser intensity), and to translate the user input (WalleJensen, Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]) in the different input modes to an interaction with the one or more fluorophore control widgets in different interaction modes (Zeiss, Figs. 14-15 and 20, and pages 13-14; Fig. 20, visually disclosing moving laser intensity sliders via mouse drag and drop as an input mode which is translated to an interaction with one or more fluorophore control widget by adjusting the applied and displayed laser intensity).”
The motivation that was utilized in Claims 1, 14-15, and 17 applies equally as well here.
Regarding Claim 4, WalleJensen-Zeiss discloses:
“wherein the one or more processors are configured to receive the user input (WalleJensen, Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]) in the different input modes (Zeiss, Figs. 14-15 and 20, and pages 13-14; Fig. 20, visually disclosing moving laser intensity sliders via mouse drag and drop as an input mode which is translated to an interaction with one or more fluorophore control widget by adjusting the applied and displayed laser intensity) from one or more user input devices selected from the group consisting of a mouse (Zeiss, Figs. 14-15 and 20, and pages 13-14; Fig. 20, visually disclosing moving laser intensity sliders via mouse drag and drop as an input mode which is translated to an interaction with one or more fluorophore control widget by adjusting the applied and displayed laser intensity), a touchpad, a joystick, a trackball, and a touchscreen, wherein the user input is received via the one or more user input devices, and the interaction modes include at least one of a click of a first button, a click of a second button, a drag-and-drop operation, a touch operation, or a mouse-over operation (Zeiss, Figs. 14-15 and 20, and pages 13-14; Fig. 20, visually disclosing moving laser intensity sliders via mouse drag and drop as an input mode which is translated to an interaction with one or more fluorophore control widget by adjusting the applied and displayed laser intensity).”
The motivation that was utilized in Claims 1, 14-15, and 17 applies equally as well here.
Regarding Claim 5, WalleJensen-Zeiss discloses:
“wherein the is one or more processors (WalleJensen, Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]) are configured to toggle, in response to the interaction in one of the interaction modes, at least one of an illumination for exciting the corresponding fluorophore, use of fluorophore information relating to the corresponding fluorophore in an un-mixing method determining contributions of the corresponding fluorophore in a common fluorescence response, or displaying an image obtained based on a fluorescence response of the corresponding fluorophore (Zeiss, Figs. 14-15 and 20, and pages 13-14; Fig. 20, visually disclosing on the right-hand side, lasers can be switched on or off either by moving the sliders to 0 or by unchecking the respective boxes above “488” and “555”).”
The motivation that was utilized in Claims 1, 14-15, and 17 applies equally as well here.
Regarding Claim 6, WalleJensen-Zeiss discloses:
“wherein the one or more processors (WalleJensen, Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]) are configured to render a fine-tuning panel in the graphical user interface in response to the interaction in one of the interaction modes (Zeiss, Figs. 14-15 and 20, and pages 13-14; Fig. 20, visually disclosing on the right-hand side, fine adjustment parameters, “Pinhole” and “Gain”).”
The motivation that was utilized in Claims 1, 14-15, and 17 applies equally as well here.
Regarding Claim 7, WalleJensen-Zeiss discloses:
“wherein the one or more processors (WalleJensen, Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]) are configured to modify the control parameters based on the user input received using the fine-tuning panel (Zeiss, Figs. 14-15 and 20, and pages 13-14; Fig. 20, visually disclosing on the right-hand side, fine adjustment parameters, “Pinhole” and “Gain”).”
The motivation that was utilized in Claims 1, 14-15, and 17 applies equally as well here.
Regarding Claim 8, WalleJensen-Zeiss discloses:
“wherein the one or more processors (WalleJensen, Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]) are configured to reposition the fluorophore control widgets in the graphical user interface upon determining the interaction in one of the interaction modes (Zeiss, Fig. 15, disclosing different “Proposals” resulting in different imaging approaches, ranging from sequential (see option “Best signal”) to simultaneous (see option “Linear unmixing”); selecting between said proposal results in repositioning of the displayed fluorophore control widgets (“Tracks”/”Channels”; see Figs. 14-15 and 20, and pages 13-14).”
Accordingly, before the effective filing date, it would have been obvious to one of ordinary skill in the art, having the teachings of WalleJensen-Zeiss, to modify a microscope control arrangement, a microscope system, a method for providing microscope control parameters, and a non-transitory computer-readable medium of WalleJensen to use the claimed repositioning of the fluorophore control widgets as in Zeiss. The motivation for doing so would have been to create the advantage of providing an intuitive, user-friendly interface which can be used for almost all standard applications while configuring all the system hardware for a chosen set of dyes, even as automatic setting configurations (see Zeiss, Figs. 14-15 and 20, and pages 13-14).
Regarding Claim 9, WalleJensen-Zeiss discloses:
“wherein the fluorophore information indicates a plurality of fluorophores (WalleJensen, Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]), and the one or more processors are configured to provide the control parameters as specifying an excitation of the plurality of fluorophores sequentially or in parallel (Zeiss, Fig. 15, disclosing different “Proposals” resulting in different imaging approaches, ranging from sequential (see option “Best signal”) to simultaneous (see option “Linear unmixing”); selecting between said proposal results in repositioning of the displayed fluorophore control widgets (“Tracks”/”Channels”; see Figs. 14-15 and 20, and pages 13-14).”
The motivation that was utilized in Claim 8 applies equally as well here.
Regarding Claim 10, WalleJensen-Zeiss discloses:
“wherein the one or more processors are configured to provide the control parameters (WalleJensen, Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]) as specifying to request the excitation of the plurality of fluorophores sequentially or in parallel based on a state of a grouping of the corresponding fluorophore control widgets in the graphical user interface (Zeiss, Fig. 15, disclosing different “Proposals” resulting in different imaging approaches, ranging from sequential (see option “Best signal”) to simultaneous (see option “Linear unmixing”); selecting between said proposal results in repositioning of the displayed fluorophore control widgets (“Tracks”/”Channels”; see Figs. 14-15 and 20, and pages 13-14).”
The motivation that was utilized in Claim 8 applies equally as well here.
Regarding Claim 11, WalleJensen-Zeiss discloses:
“wherein the is one or more processors are configured to provide the control parameters (WalleJensen, Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]) as specifying at least one of camera settings or scanner settings (Zeiss, Figs. 19-20, and pages 18-19, disclosing the claimed camera/scanner settings; see also Figs. 14-15, and pages 13-14).”
Accordingly, before the effective filing date, it would have been obvious to one of ordinary skill in the art, having the teachings of WalleJensen-Zeiss, to modify a microscope control arrangement, a microscope system, a method for providing microscope control parameters, and a non-transitory computer-readable medium of WalleJensen to use the claimed camera/scanner settings as in Zeiss. The motivation for doing so would have been to create the advantage of generating optimal/superior images (see Zeiss, Figs. 19-20, and pages 18-19; see also Figs. 14-15, and pages 13-14).
Regarding Claim 12, WalleJensen-Zeiss discloses:
“wherein the one or more processors are configured to control an operation of a fluorescence microscope (WalleJensen, Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]) comprising a plurality of light sources, and wherein the illumination intensity is an illumination intensity of one or more of the plurality of light sources used for excitation of the corresponding fluorophore (Zeiss, Figs. 14-15 and 20, and pages 13-14; Fig. 20, visually disclosing laser power sliders on the right-hand side for lasers “488” and “555”).”
The motivation that was utilized in Claims 1, 14-15, and 17 applies equally as well here.
Claim Rejections - 35 USC § 103
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over WalleJensen-Zeiss, and in further view of Wu et al., US Patent Application Publication No.: 2017/0176338 A1, hereby Wu.
Regarding Claim 13, WalleJensen-Zeiss discloses:
“wherein the control parameters are adapted to be used in a . . . fluorescence examination technique (WalleJensen, Fig. 4, and [0086]-[0090]; Figs. 5-6, element 502, and [0091]; see also Figs. 1 and 2-3 and [0075] and [0084]; see also Fig. 7; [0102] and [0122]).”
However, although WalleJensen-Zeiss suggests the claimed type of fluorescence examination technique, Wu does expressly disclose the following:
“wherein the control parameters are adapted to be used in a wide-field fluorescence examination technique and a confocal fluorescence examination technique (Figs. 4, 10, and 25-27, and [0074]-[0076]).”
Accordingly, before the effective filing date, it would have been obvious to one of ordinary skill in the art, having the teachings of WalleJensen-Zeiss and Wu, to modify a microscope control arrangement, a microscope system, a method for providing microscope control parameters, and a non-transitory computer-readable medium of WalleJensen-Zeiss to use the claimed the claimed type of fluorescence examination technique as in Wu. The motivation for doing so would have been to create the advantage of precisely determining colors of different fluorophores in the region of the environment (see Wu, Figs. 4, 10, and 25-27, and [0074]-[0076]).
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Examiner notes that multiple references cited disclose microscope control systems. For example, the following references show similar features in the claims, although not relied upon: Boutoussov (US 20180085188 A1), Fig. 4; Lett (US 20140310635 A1), Fig. 10.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHLEEN M WALSH whose telephone number is (571)270-0423. The examiner can normally be reached M-F 8:00 AM - 5:00 PM.
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/KATHLEEN M WALSH/Primary Examiner, Art Unit 2482
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