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 .
Response to Arguments
Applicant’s arguments with respect to claims 1, 24, and 41 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding the prior rejections under 35 USC 112(b), the Examiner agrees that the term “substantially” is not indefinite and interprets the term as within normal manufacturing tolerances.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “an imaging device configured to capture an image of the sample” in claim 18.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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 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.
Claims 1 and 24 are rejected under 35 U.S.C. 102(a)(1),(a)(2) as being anticipated by Kelly et al. (US 8033706 B1), hereinafter “Kelly”.
Regarding claim 1, Kelly discloses an assembly (abstract, Fig. 13) comprising:
a first substrate configured to receive a biological sample, wherein the first substrate is optically transparent (ref 32, col. 88, lines 1-5);
a second substrate having a top surface, a bottom surface, and a plurality of sides, wherein the first substrate contacts the top surface of the second substrate, wherein the second substrate is optically transparent (ref 10, col. 88, lines 1-5);
at least one light source configured to illuminate at least one of the plurality of sides of the second substrate (ref 14, col 88, lines 1-5);
a light scattering layer on the bottom surface of the second substrate, wherein the light scattering layer is configured to scatter light from the light source into the second substrate (ref 34, col. 88, line 25 - col. 89, line 5); and
a thermal control module coupled to the second substrate and configured to control the temperature of the second substrate (col. 40, lines 1-15).
Regarding claim 24, Kelly discloses a method (abstract, Fig. 13) comprising:
providing an assembly (Figs. 9, 13) comprising:
a first substrate configured to receive a biological sample, wherein the first substrate is optically transparent (ref 32, col. 88, lines 1-5);
a second substrate having a top surface, a bottom surface, and a plurality of sides, wherein the first substrate contacts the top surface of the second substrate, wherein the second substrate is optically transparent (ref 10, col. 88, lines 1-5); and
at least one light source configured to illuminate at least one of the plurality of sides of the second substrate (ref 14, col 88, lines 1-5);
a light scattering layer on the bottom surface of the second substrate, wherein the light scattering layer is configured to scatter light from the light source into the second substrate (ref 34, col. 88, line 25 - col. 89, line 5); and
energizing the at least one light source to thereby couple emitted light from the at least one light source to the second substrate and scatter the emitted light via the light scattering layer to transilluminate the sample (col. 88, line 25 - col. 89, line 5).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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, 7, and 11-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kataoka et a. (JP 2010230397 A), references to English machine translation, hereinafter “Kataoka”, and further in view of Aravanis et al. (US 2019/0283024 A1), hereinafter “Aravanis”.
Regarding claim 1, Kataoka teaches an assembly (Figs. 1, 9, abstract) comprising:
a first substrate (ref 20, paragraph [0013]) configured to receive a biological sample (paragraph [0014]), wherein the first substrate is optically transparent (paragraph [0013], inherent, as the light travels through the substrate);
a second substrate (ref 61) having a top surface, a bottom surface, and a plurality of sides (as shown in Fig. 1), wherein the first substrate contacts the top surface of the second substrate (as shown in Fig. 1), wherein the second substrate is optically transparent (paragraph [0016]);
at least one light source configured to illuminate at least one of the plurality of sides of the second substrate (ref 62, paragraph [0016], as shown in Fig. 1);
a light scattering layer on the bottom surface of the second substrate, wherein the light scattering layer is configured to scatter light from the light source into the second substrate (ref 61h, paragraph [0018]).
Kataoka is silent regarding a thermal control module coupled to the second substrate and configured to control the temperature of the second substrate.
However, Aravanis teaches a device for analyzing a biological sample (abstract, Fig. 1), including a thermal control module coupled to the second substrate and configured to control the temperature of the second substrate (ref 222, paragraphs [0089], [0099]])
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Kataoka with the teaching of Aravanis by including a thermal control module coupled to the second substrate and configured to control the temperature of the second substrate in order to keep the temperature of the sample stable or bring the sample to a threshold temperature.
Regarding claim 7, Kataoka teaches at least one reflective layer disposed on at least one of the plurality of sides of the second substrate (ref 61a, or 61h, paragraph [0018]).
Regarding claim 11, Kataoka teaches wherein the at least one light source is connected to at least one of the plurality of sides of the second substrate (as shown in Fig 1).
Regarding claim 12, Kataoka teaches wherein light emitted from the at least one light source is coupled by the second substrate and converted to wide angle transillumination of the sample (as shown in Fig. 1).
Regarding claim 13, Kataoka teaches wherein the at least one light source comprises light emitting diodes (LEDs) (paragraph [0019]).
Regarding claim 14, Kataoka teaches wherein the at least one light source comprises a uniform spectrum (paragraph [0019]).
Regarding claim 15, Kataoka teaches wherein the at least one light source is positioned in a plane that is aligned with at least one side of the plurality of sides (as shown in Fig. 1).
Regarding claim 16, Kataoka teaches a fiber optic device coupling the at least one light source to the second substrate and/or the light scattering layer (Fig. 7, ref 62h, paragraph [0023]).
Regarding claim 17, Kataoka and Aravanis are silent regarding wherein the thermal control module contacts the light scattering layer opposite the second substrate.
However, It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include wherein the thermal control module contacts the light scattering layer opposite the second substrate, as it has been held that the particular placement of an element in a measuring device was held to be an obvious matter of design choice. In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). One would place the TCM in the claimed location in order to more efficiently control the temperature.
Regarding claim 18, Kataoka teaches a system (abstract, Fig. 1) comprising:
the assembly of claim 1 (supra); and
an imaging device configured to capture an image of the sample (ref 90, paragraph [0017]).
Regarding claim 19, Kataoka teaches wherein the imaging device is disposed on a side of the first substrate opposite the second substrate (as shown in Fig. 1).
Claims 2-4, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kataoka and Aravanis as applied to claim 1 or claims 1 and 7 above, and further in view of Vasylyev et al. (US 2019/0079239 A1), hereinafter “Vasylyev”.
Regarding claim 2, Kataoka is silent regarding wherein the light scattering layer comprises a plurality of titanium dioxide nanoparticles disposed within a polymer.
However, Vasylyev teaches an optical device (abstract) including wherein the light scattering layer comprises a plurality of titanium dioxide nanoparticles disposed within a polymer (paragraphs [0094], [0128], [0147]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Kataoka with the teaching of Vasylyev by including wherein the light scattering layer comprises a plurality of titanium dioxide nanoparticles disposed within a polymer in order to improve the scattering of the light.
Regarding claim 3, Kataoka is silent regarding wherein the plurality of titanium dioxide nanoparticles comprises a mean diameter of less than or equal to about 500 nm.
However, Vasylyev teaches wherein the plurality of titanium dioxide nanoparticles comprises a mean diameter of less than or equal to about 500 nm (paragraph [0149]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Kataoka with the teaching of Vasylyev by including wherein the plurality of titanium dioxide nanoparticles comprises a mean diameter of less than or equal to about 500 nm in order to improve scattering of the light, as the particle size is approximately the wavelength of the light.
Regarding claim 4, Kataoka is silent regarding wherein the plurality of titanium nanoparticles is 30-60 wt. % of the light scattering layer.
However, Vasylyev teaches wherein the plurality of titanium nanoparticles is 30-60 wt. % of the light scattering layer (paragraph [0151]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Kataoka with the teaching of Vasylyev by including wherein the plurality of titanium nanoparticles is 30-60 wt. % of the light scattering layer in order to improve scattering of the light.
Regarding claim 8, Kataoka is silent regarding wherein the at least one reflective layer comprises silver or aluminum.
However, Vasylyev teaches wherein the at least one reflective layer comprises silver or aluminum (paragraph [0062]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Kataoka with the teaching of Vasylyev by including wherein the at least one reflective layer comprises silver or aluminum in order to improve reflectivity of the light with a highly reflective material, paragraph [0062].
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kataoka and Aravanis as applied to claims 1 and 7 above, and further in view of Yamamoto et al. (US 2019/0121013 A1), hereinafter “Yamamoto”.
Regarding claim 9, Kataoka is silent regarding wherein the at least one reflective layer is disposed on at least one of the plurality of sides that is not illuminated by the at least one light source.
However, Yamamoto teaches an optical device (abstract) including wherein the at least one reflective layer is disposed on at least one of the plurality of sides that is not illuminated by the at least one light source (Fig. 19A-C, paragraph [0123]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Kataoka with the teaching of Yamamoto by including wherein the at least one reflective layer is disposed on at least one of the plurality of sides that is not illuminated by the at least one light source in order to have an alternative configuration that would perform equally well, using fewer reflective materials, lowering cost.
Regarding claim 10, Kataoka is silent regarding wherein each reflective layer is opposite a side of the second substrate illuminated by the at least one light source.
However, Yamamoto teaches an optical device (abstract) including wherein each reflective layer is opposite a side of the second substrate illuminated by the at least one light source (Fig. 19A-C, paragraph [0123]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Kataoka with the teaching of Yamamoto by including wherein each reflective layer is opposite a side of the second substrate illuminated by the at least one light source in order to have an alternative configuration that would perform equally well, using fewer reflective materials, lowering cost.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kataoka and Aravanis as applied to claims 1 and 18 above, and further in view of Yamamoto.
Regarding claim 20, Kataoka is silent regarding wherein the imaging device comprises an objective lens.
However, Yamamoto teaches an optical device (abstract), including wherein the imaging device comprises an objective lens (paragraph [0142]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Kataoka with the teaching of Yamamoto by including wherein the imaging device comprises an objective lens in order to focus the light on the sample.
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Kataoka and further in view of Vasylyev.
Regarding claim 41, Kataoka teaches a substrate made by the process comprising:
providing an optically transparent substrate having a top, a bottom, and a plurality of sides, (paragraph [0013], inherent, as the light travels through the substrate);
wherein the layer is configured to scatter light from at least one of the plurality of sides into the optically transparent substrate (ref 61, paragraph [0016]).
Kataoka is silent regarding wherein the optically transparent substrate comprises sapphire glass (Kataoka teaches quartz glass, paragraph [0016]) and applying to the bottom of the optically transparent substrate a layer comprising a plurality of titanium dioxide nanoparticles and epoxy resin, wherein the plurality of titanium dioxide nanoparticles has a mean diameter of less than or equal to about 500 nm and applying to at least one side of the plurality of sides a silver or aluminum layer.
However, the Examiner takes Official Notice that substituting sapphire and quartz glass is well-known, and involves only ordinary skill. One would use sapphire as it has better strength and scratch resistance.
Furthermore, Vasylyev teaches an optical device (abstract) including applying to the bottom of the optically transparent substrate a layer comprising a plurality of titanium dioxide nanoparticles and epoxy resin (paragraphs [0094], [0128], [0147]) and wherein the plurality of titanium dioxide nanoparticles has a mean diameter of less than or equal to about 500 nm (paragraph [0149]) and applying to at least one side of the plurality of sides a silver or aluminum layer (paragraph [0062]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Kataoka with the teaching of Vasylyev by including wherein the light scattering layer comprises a plurality of titanium dioxide nanoparticles disposed within a polymer and wherein the plurality of titanium dioxide nanoparticles has a mean diameter of less than or equal to about 500 nm and wherein the at least one reflective layer comprises silver or aluminum in order to improve the scattering of the light and improve reflectivity of the light with a highly reflective material, paragraph [0062].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cornelissen (US20040105617A1) teaches a similar assembly, and could be combined with prior art of record to render at least the independent claims obvious.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC J BOLOGNA whose telephone number is (571)272-9282. The examiner can normally be reached Monday - Friday 7:30am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara E 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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/DOMINIC J BOLOGNA/Primary Examiner, Art Unit 2877
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