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 .
Priority
Acknowledgment is made of applicant’s claim for priority under 35 U.S.C. 119 (e) and 120.
Drawings
The originally filed drawings were received on 7/12/2024. These drawings are acceptable.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because of the following informalities:
Abstract, line 1- ‘comprise’ should read ‘include’.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8, line 14- ‘in response selecting’ should read ‘in response to selecting’.
Appropriate correction is required.
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 1-6, 8-20, as best understood, are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. 12061207. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-20 of U.S. Patent No. 12061207 similarly claims and discloses a microscope system (See for example Claim 1) comprising a plurality of microscope modules configured to receive a plurality slides (See for example Claim 1, lines 2-3); and a processor coupled to one or more slide loaders (See for example Claim 1, lines 4-6), the processor configured with instructions which, when executed, cause the one or more slide loaders to: move a slide into or from a selected microscope module among the plurality of microscope modules (See for example Claim 1, lines 6-10). Claims 1-20 of U.S. Patent No. 12061207 further similarly claims and discloses the processor is configured with instructions to: select a slide among the plurality of slides for scanning; select a microscope module of the plurality of microscope modules; load the slide into the selected microscope module; and after the microscope module scans the slide, retrieve the slide from microscope module (See for example Claim 2); a linkage operatively coupled to the processor to move the plurality of slides to the plurality of microscope modules in response to instructions from the processor, to retrieve the plurality of slides from the plurality of microscope modules, and to place the plurality of slides on the one or more slide loaders in response to instructions from the processor (See for example Claim 3); the plurality of microscope modules comprises a plurality of locations to receive the plurality of slides and wherein each of the plurality of locations corresponds to one of the plurality of microscope modules and comprises a location separate from other locations of the plurality of locations and wherein the linkage is configured to place one or more of the plurality of slides at said each of the plurality of locations in response to instructions from the processor (See for example Claim 4); the processor is configured with a plurality of coordinate references corresponding to the plurality of locations and wherein the processor is configured with instructions to place each of the plurality of slides at a location among the plurality of locations based on the plurality of coordinate references and an identifier of the slide (See for example Claim 5); a plurality of end effectors each coupled to the linkage and the processor and configured to engage and disengage the slide (See for example Claim 7); the plurality of microscope modules comprises a first microscope module comprising a first class of microscope and a second microscope module comprising a second class of microscope, the first class of microscope and the second class of microscope are selected from the group consisting of a high definition microscope, a digital microscope, a computational microscope, a 3D microscope, a phase imaging microscope, a phase contrast microscope, a dark field microscope, a differential interference contrast microscope, a lightsheet microscope, a confocal microscope, a holographic microscope and a fluorescence-based microscope, the processor is configured to select between the first class and the second class based on the slide, and the instructions cause the one or more slide loaders to move the slide to the first microscope module or the second microscope module in response to selecting between the first class and the second class (See for example Claim 8); the instructions further comprise instructions for: detecting the slide; identifying the slide; retrieving information about the identified slide; and selecting, based on the information, the slide (See for example Claim 9); detecting the slide comprises detecting the slide in at least one of a slide receptacle, the one or more slide loaders, or one of the plurality of microscope modules (See for example Claim 10); identifying the slide comprise reading at least one of a unique identifier, a bar code, an optical character recognition code, optical character recognition, a radio-frequency identification (RFID) tag, a user input, or a preview image of the slide (See for example Claim 11); the information comprises a priority for the slide and selecting the slide comprises selecting the slide based on comparing the priority to priorities of other slides among the plurality of slides (See for example Claim 12); the information comprises a user-defined selection and selecting the slide comprises selecting the slide based on the user-defined selection (See for example Claim 13); the information comprises an order in a queue of slides and selecting the slide comprises selecting the slide based on the order (See for example Claim 14); a sensor for detecting and identifying slides (See for example Claim 15); the sensor comprises at least one of a camera, a barcode reader, or a laser (See for example Claim 16); the sensor is located on at least one of a slide receptacle, the one or more slide loaders, or one of the plurality of microscope modules (See for example Claim 17); the sensor is configured to capture a preview image of the slide (See for example Claim 18); the instructions comprise instructions for selecting the selected microscope module, comprising: identifying each of the plurality of microscope modules; determining a scan capability for each of the plurality of microscope modules; determining a scan need for the slide; and selecting the microscope module from the plurality of microscope modules based on the scan capability of the selected microscope module satisfying the scan need of the slide (See for example Claim 19); and identifying each of the plurality of microscope modules comprises determining coordinates for each of the plurality of microscope modules (See for example Claim 20).
Allowable Subject Matter
Claim 7 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARNEL C LAVARIAS whose telephone number is (571)272-2315. The examiner can normally be reached M-F 10:30 AM-7 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone Allen can be reached at 571-272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ARNEL C. LAVARIAS
Primary Examiner
Group Art Unit 2872
6/24/2026
/ARNEL C LAVARIAS/Primary Examiner, Art Unit 2872
Prosecution Insights