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
2. 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.
3. Claims 6 and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As for claim 6, ‘wherein each of the two or more evanescent fields is generated at a unique time such that no two of the two or more evanescent fields are present within the imaging region at the same time’ is indefinite, for it is unclear how two or more generated evanescent fields captured in ‘an image of the imaging region (claim 1)’ wherein one or more sample characteristics are determined …’from an interaction between each of the two or more evanescent fields and the sample within the image (claim 1)’ can be generated both simultaneously as it appears in claim 1 and separately in time in claim 6 which depends from claim 1.
Claim 17 recites the limitation "the imaging region" in line 6. There is insufficient antecedent basis for this limitation in the claim. Claims 18-20 are rejected by virtue of their dependency.
When further treating the claims 17-20 on the merits, the examiner will be interpreting ‘the imaging region’ in line 6 of claim 17 as reading as -an imaging region-.
Claim Rejections - 35 USC § 102
4. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
5. Claims 1-4 and 7-9 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Tischer et al. (6,987,609)-cited by applicant.
As for claim 1, Tischer in a microscope discloses a method for characterizing a sample located within an imaging region (Fig. 1: 38 with Fig. 8: 548 defines the size of the imaging region in 538 and 536; col. 3, lines 8-23: demonstrates a sample’s size may be characterized; col. 4, lines 55-67: demonstrates a sample’s shape, structure, may be characterized), the method comprising the steps of: generating two or more evanescent fields (Fig. 8: 544, 544’, 544”, 544’” demonstrate at the minimum four evanescent fields at four different directions; col. 10, lines 66-67 and col. 11, lines 1-3 (noting: col. 1, lines 19-34 and col. 7, lines 19-32)) , each of the two or more evanescent fields directed into the imaging region at a unique direction (Fig. 8: 544, 544’, 544”, 544’” demonstrate at the minimum four evanescent fields at four different directions); capturing an image of the imaging region (Fig. 1: 22 interpreting that the image of the imaging region would be captured by the camera); determining one or more sample characteristics of the sample according to a spatial intensity pattern resulting from an interaction between each of the two or more evanescent fields and the sample within the image (col. 3, lines 8-23: demonstrates a sample’s size may be characterized; col. 4, lines 55-67: demonstrates a sample’s shape, structure, may be characterized; again, col. 7, lines 19-32).
As for claim 2, Tischer discloses/suggests everything as above (see claim 1). In addition, Tischer discloses/suggests the one or more sample characteristics comprise a shape or size and the method comprises determining the shape or size of the sample from the spatial intensity pattern (col. 4, lines 55-67: demonstrates a sample’s shape, structure, may be characterized; col. 3, lines 8-23: demonstrates a sample’s size may be characterized).
As for claim 3, Tischer discloses/suggests everything as above (see claim 1). In addition, Tischer discloses/suggests wherein the intensity pattern comprises one or more local intensity maxima, and wherein the one or more sample characteristics are determined at least in part based on an identified location of the one or more local intensity maxima (col. 1, lines 23-34: demonstrating local intensity maxima is used by virtue of the light field is used for ‘strictly locally delimited illumination’; col. 7, lines 19-30: again, demonstrating the use of local intensity maxima since ‘this yields a type of illumination which is very sharply delimited locally in the axial direction’; col. 3, lines 8-23: demonstrates a sample’s size may be characterized; col. 4, lines 55-67: demonstrates a sample’s shape, structure, may be characterized).
As for claim 4, Tischer discloses/suggests everything as above (see claim 3). In addition, Tischer discloses/suggests wherein identifying one or more local maxima includes applying a filter for identifying one or more central locations of the one or more local maxima within the intensity pattern (col. 3, lines 42-65; col. 5, lines 8-17; col. 10, lines 5-15: which at least demonstrate filtering to see fluorescence maxima in the sample).
As for claim 7, Tischer discloses/suggests everything as above (see claim 1). In addition, Tischer discloses/suggests wherein one of the two or more evanescent fields has a unique direction which is at a different angular direction from a unique direction of the other of the two or more evanescent fields, wherein the two or more evanescent fields are directed into the imaging region at two different angular directions (Fig. 8: 544, 544’, 544”, 544’’’with col. 10, line 47-col. 11, line 3).
As for claims 8 and 9, Tischer discloses/suggests everything as above (see claim 1). In addition, he discloses/suggests wherein the intensity pattern comprises one or more local intensity maxima, and further comprises identifying a location of the, or each, local intensity maxima, wherein the one or more sample characteristics comprises at least: one or more shapes; and one or more size parameters, and wherein the one or more shapes and one or more sizes are determined based on the identified location of the, or each, local intensity maxima (claim 8) (col. 1, lines 23-34: demonstrating local intensity maxima is used by virtue of the light field is used for ‘strictly locally delimited illumination’; col. 7, lines 19-30: again, demonstrating the use of local intensity maxima since ‘this yields a type of illumination which is very sharply delimited locally in the axial direction’; col. 3, lines 8-23: demonstrates a sample’s size may be characterized; col. 4, lines 55-67: demonstrates a sample’s shape, structure, may be characterized); and wherein the at least one of one or more shapes and one or more sizes are determined based at least in part on the unique direction of each of the two or more evanescent fields (col. 3, lines 8-30: demonstrates a sample’s size may be characterized; col. 4, lines 55-67: demonstrates a sample’s shape, structure, may be characterized)
6. Claim 10-15 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (CN 103048272 A)-using machine translation.
As for claims 10 and 17 (treating claim 10 as the apparatus for the practice of claim 17), Liu in a resolution microscopic imaging method and device based on frequency shift of evanescent illumination discloses/suggests a sample characterizing apparatus which would thereby its operation for characterizing a sample (claims 10 and 17) (Fig. 1 with Figs. 2, 5, and 6) comprising an imaging sensor (claims 10 and 17)(Fig. 1: interpreting rectangular box of microscope (3) as an image sensor noting control and communication with computer (4), an optical medium including a first surface above which a sample is positionable; thereby, positioning a sample above a first surface of the optical medium (claims 10 and 17)(Fig. 1: 2 and 5 being on first surface of 2; and noting: Fig. 6); a plurality of light inputs each configured to direct light received by the light input into the optical medium, each from a unique direction, such as to produce total internal reflection from the first surface when no sample is present; thereby, generating two or more evanescent fields within the imaging region, each associated with a unique one of the plurality of light inputs, wherein the light inputs are arranged such that each of the two or more evanescent fields is associated with a unique direction (claims 10 and 17) (Fig. 5: 6 demonstrating at least 8 light inputs at different angles, directions; abstract; paragraphs 0019 and 0069), wherein the imaging sensor is arranged to capture an image of a spatial intensity pattern due to a sample interacting with an evanescent field associated with each light input; thereby, capturing an image of the imaging region using the imaging sensor, said image including a spatial intensity pattern resulting from an interaction between each of the two or more evanescent fields and the sample within the imaging region (claims 10 and 17)(Fig. 1: rectangular box of 3 being an imaging sensor; abstract; paragraphs 0008, 0027, 0034, 0035).
As for ‘such as to produce total internal reflection from the first surface when no sample is present’ it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex Parte Masham, 2 USPQ F.2d 1647 (1987).
As for claims 11 and 18, Liu discloses/suggests everything as above (see claims 10 and 17). In addition, Liu discloses/suggests wherein at least two of the plurality of light inputs are each associated with a unique characterizing wavelength, and the at least two of the plurality of light inputs are configured to direct the light into the optical medium according to a sequence, wherein the sequence comprises at least one evanescent field generated after at least one other evanescent field, wherein the imaging sensor is configured to image the first surface such that each of the plurality of light input is differentiable; thereby, wherein at least two of the two or more evanescent fields are created according to a sequence, wherein the sequence comprises at least one evanescent field of the at least two of the two or more evanescent fields generated after at least one other evanescent field of the at least two of the two or more evanescent fields (claims 11 and 18)(paragraph 0078 demonstrates an image taken for each light source making each light input differentiable; paragraph 0037: at least demonstrating that each light source could have a different color filter).
As for claims 12 and 19, Liu discloses/suggests everything as above (see claims 10 and 17). In addition, Liu discloses/suggests wherein one of the plurality of light inputs has a unique direction which is at a different angular direction from a unique direction of the other of the plurality of light inputs such that the light from the at least two light inputs are directed into the sample at two different angular directions; wherein one of the at least two of the two or more evanescent fields has a unique direction which is at a different angular direction from the unique direction of the other of the at least two of the two or more evanescent fields wherein the at least two of the two or more evanescent fields are directed into the imaging region at two different angular directions (claims 12 and 19)(Fig. 5 with paragraph 0078).
As for claims 13-15, Liu discloses/suggests everything as above (see claim 10). In addition, Liu discloses/suggests each light input is coupled to a light source (claim 13)(Fig. 5: 6 coupled to 1); wherein the light source comprises at least one of a laser or an LED light source (claim 14)(paragraphs 0037, 0068, noting: Fig. 2: 7); an optical coupler, wherein an optical coupler comprises the optical medium and the light source (claim 15)(Fig. 1: 1 and 2 with Fig. 2: 7, 9, 8, 10: noting Fig. 5: 6 and 1; Fig. 3: 6 and 2; Fig. 6 with paragraph 0080).
As for claim 20, Liu discloses/suggests everything as above (see claim 17). In addition, Liu discloses/suggests transmitting the captured image to a computer, wherein the computer is configured to determine one or more sample characteristics of the sample according to the spatial intensity pattern (Fig. 1: 3 to 4; paragraph 0081; claims 4 and 6).
Claim Rejections - 35 USC § 103
7. 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.
8. Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN 103048272 A)-using machine translation.
As for claim 16, Liu discloses/suggests everything as above (see claim 13). Liu is silent concerning wherein for each of the plurality of light inputs, the angle at which light is projected into the imaging region is adjustable. Nevertheless, he demonstrates that the incidence surface inclination angle is dependent on the refractive index of the prism that is used (paragraph 0038). Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have each of the plurality of light inputs have the angle at which light is projected into the imaging region be adjustable in order to use prisms of varying refractive index and thereby needing varying incidence surface inclination angles.
Double Patenting
9. 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.
10. Claims 1, 3-5, 10, 13-17, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,055,489 to Bolton et al.. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-14 of ‘489 appear to anticipate claims 1, 3-5, 10, 13-17, and 20.
The claims of ‘377 are unpatentable over the claims of ‘489 as such:
Claims of ‘377
Claims of ‘489
1
1-5
3
4, 5
4
5
5
2
10
6-12
13
9
14
10-12
15
12
16
7
17
13-14
20
14
Allowable Subject Matter
11. Claim 5 appears to be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and if the nonstatutory double patenting rejection is overcome and if rewritten to include all of the limitations of the base claim and any intervening claims.
Claim 6 appears to be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 11,105,746 to Bartal et al. (see abstract and FIG. 2A and FIG. 2B)
US 11,092,792 to Fahrbach et al. (see Fig. 10: 33 with Figs. 2-4)
Fax/Telephone Numbers
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Gordon J. Stock, Jr. whose telephone number is (571) 272-2431.
The examiner can normally be reached on Monday-Friday, 10:00 a.m. - 6:30 p.m.
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supervisor, Kara Geisel, can be reached at 571-272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GORDON J STOCK JR/
Primary Examiner, Art Unit 2877