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 Amendment
The amendments filed 24 July 2026 have been entered. Claims 1-16 remain pending in the application. The Applicant’s amendments to the claims overcome a majority of the 112(b) rejections and some of the 103 rejection previously set forth; however, the amendments fail to overcome the 101 rejections previously set forth. (See response to arguments section for further details).
Response to Arguments
Applicant's arguments filed 24 July 2026 have been fully considered but some are not persuasive.
On page 9, the Applicant argues that the amendments to the claims overcome the 112(b) rejections previously set forth, however, the Examiner only partially agrees. The amendments to the claims overcome the previous rejections of claims 6, 10, and 12-14, however, the amendments fail to overcome the previous rejections of claims 1 and 2. Additionally, the amendments have raised new 112(b) rejections in claims 6, 10, and 13. The Applicant argues that the addition of “wherein impermissible exceedance is determined based on at least one of: a duration of exceedance of the first threshold value, or an amount of exceedance of the first threshold value” overcomes the clarity issues with the limitation “impermissibly exceed;” however, the Examiner disagrees. There is still no clear explanation on what impermissibly exceed means. Merely stating that the impermissible exceedance is based on duration and/or amount does not explain how one determine if the drift value exceeds the threshold admissibly versus inadmissibly. For the reasons set forth above, the rejection of claims 1 and 2, as well as newly amended claims 6 and 10, under 112(b) have not been overcome.
On pages 10-13, the Applicant argues against the 101 rejections previously set forth. In response to applicant’s use of the August 2025 memorandum on page 10 of “Remarks”, the examiner notes that the memorandum provides reminders of existing policy, which reminds the examiner to carefully distinguish between claim limitations that merely involve a judicial exception versus those that recite an exception. It states that it is not intended to announce any new subject matter evaluation. This analysis is consistent with the USPTO’s August 2025 memorandum on 35 USC § 101.
On page 11, the Applicant argues that the amended claims no longer recite a mental process, specifically stating that the claims require “determining a context-specific threshold for an imaging sequence based on parameters associated with that sequence” and how a “human cannot…acquire time-resolved optical-focus measurement data from an autofocus imaging device and set the physical optical focus of that device by mental effort alone;” however, the Examiner disagrees. A human is capable of looking at a sequence of time-stamped images and determining whether said images are in focus using a threshold (for example, noticeable blur, environmental factors, etc.). A human is then capable of, based on the amount of observed blur, environmental factors, etc., using a look-up table to determine the best focus to set. For the reasons set forth above, the claims do not overcome step 2A, Prong 1 of the 101 analysis.
On pages 11-12, the Applicant argues that the amended claims integrate the judicial exception into a practical application, specifically stating that first, “the threshold is not a pre-supplied number” and second, that the claimed device “sets the optical focus as a physical result;” however, the Examiner disagrees. First, a human is capable of setting a threshold based on observed blur in the images, environmental factors, etc. Second, the limitation that includes the setting of the optical focus is a contingent limitation that does not limit the claim in any way as it need not occur. Even if the setting was not a contingent claim, a human is capable of, based on the amount of observed blur, environmental factors, etc., using a look-up table to determine the best focus to set. Additionally, the Applicant states that the claimed method provides a specific improvement, however, this specific improvement is not claimed and therefore not considered for 101 analysis. For the reasons set forth above, the claims do not overcome step 2A, Prong 2 of the 101 analysis.
On page 12, the Applicant argues that the amended claims amount to significantly more than the abstract idea, however, the Examiner disagrees. As stated above, many of the claim limitations recite mental processes, and the only additional limitations claimed recite mere data gathering (i.e. “obtaining a value”). For the reasons set forth above, the claims do not overcome step 2B of the 101 analysis.
On pages 13-18, the Applicant argues against the 103 rejections previously set forth. Specifically, on pages 13-15, the Applicant argues against the rejection of newly amended independent claim 1 under 35 U.S.C. 103, Li in view of Asukabe. First, the Applicant argues that neither Li nor Asukabe teaches the claimed impermissible exceedance limitation, however, the Examiner disagrees. since there is no claimed meaning to the impermissible exceedance, it is basically moot. Additionally, Li clearly teaches the compensation for a defocusing amount, implying that the defocus value “permissibly” exceeds a threshold. Lastly, the final limitation of claim 1 is a contingent limitation and [t]he broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met (MPEP 2111.04 II). The remainder of the arguments regarding claim 1 rely on Li and Asukabe failing to teach the threshold functioning as a plausibility gate, however, that is not claimed.
On pages 16-17, the Applicant argues against the rejection of newly amended claim 13 under 35 U.S.C. 103, Li in view of Kogai. The Examiner agrees with the Applicant’s arguments, therefore the rejection has been withdrawn.
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.
Claims 1-8 and 10-16 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.
Regarding claim 1, “setting the optical focus based on the first drift value when the first drift value does not impermissibly exceed the first threshold value” in lines 10-12 is unclear. How does one determine if the drift value exceeds the threshold admissibly versus inadmissibly?
Claims 2-8, 12, and 15-16 are rejected for their dependency on claim 1.
Regarding claim 2, “the device” in line 4 and “the environment” in line 5 both lack proper antecedent basis and are therefore both unclear.
Regarding claim 6, “setting the optical focus based on the first drift value when the first drift value does not impermissibly exceed the redetermined first threshold value” in lines 8-9 is unclear. How does one determine if the drift value exceeds the threshold admissibly versus inadmissibly?
Regarding claim 10, “it” in line 5 is unclear. To what limitation is i:it: referring? In light of the specification, the Examiner is interpreting this limitation to be referring to the first drift value mentioned previously. Additionally, setting the optical focus based on the first drift value when the first drift value does not impermissibly exceed the first threshold value” in lines 8-9 is unclear. How does one determine if the drift value exceeds the threshold admissibly versus inadmissibly?
Claim 11 is rejected for its dependency on claim 10.
Regarding claim 13, “measurements” in line 4 is unclear as this limitation has been mentioned previously in line 3 of the same claim. Is this limitation referring to the same measurements mentioned previously or different measurements? In light of the specification, the Examiner is interpreting this limitation to be referring to the same measurements mentioned previously.
Claim 14 is rejected for its dependency on claim 13.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-16 are rejected under 35 U.S.C. 101 because:
Regarding claim 1, in step I of the 101 analysis set forth in MPEP 2106, the claim recites a computer-based method of setting an optical focus for a sample, comprising the steps of:. The claim recites a method. A method is one of the four statutory categories of invention.
In Step 2A, Prong 1 of the 101 analysis set forth in MPEP 2106, the examiner has determined that the following limitations recite a process that, under broadest reasonable interpretation, covers a mental process or mathematical concept but for the recitation of generic computer components:
determining, for an imaging sequence of the sample, a first threshold value for a drift of the optical focus based on parameters associated with the imaging sequence; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like determining a value based on observed parameters, which is either a mental process of observation/evaluation/judgement (MPEP 2106)).
comparing the first drift value with the first threshold value; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like comparing two values, which is either a mental process of observation/evaluation/judgement (MPEP 2106)).
setting the optical focus based on the first drift value when the first drift value does not impermissibly exceed the first threshold; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like determining, through a look-up table, the best optical focus to set based on received information, which is either a mental process of observation/evaluation/judgement (MPEP 2106)). The Examiner notes that this limitation recites a contingent limitation. Contingent limitations are not required to be met as they are conditional to a prior condition (MPEP 2111.04). The Examiner recommends the Applicant amend the independent claim to fix the contingency.
wherein impermissible exceedance is determined based on at least one of: a duration of exceedance of the first threshold value, or an amount of exceedance of the first threshold value. (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like comparing values and/or observing a duration of time, which is either a mental process of observation/evaluation/judgement (MPEP 2106)). The Examiner notes that this limitation recites a contingent limitation. Contingent limitations are not required to be met as they are conditional to a prior condition (MPEP 2111.04). The Examiner recommends the Applicant amend the independent claim to fix the contingency.
If the claim limitations, under their broadest reasonable interpretation, covers activities classified under Mental processes: concepts performed in the human mind (including observation, evaluations, judgement, or opinion) (see MPEP 2106.04(a)(2), subsection (III)) or Mathematical concepts: mathematical relationships, mathematical formulas or equations, or mathematical calculations (see MPEP 2106.04(a)(2), subsection (I)). Accordingly, the claim recites an abstract idea.
In Step 2A, Prong 2 of the 101 analysis, set forth in MPEP 2106, the examiner has determined that the following additional elements do not integrate this judicial exception into a practical application:
obtaining a first drift value, wherein the first drift value is based on measurements of at least one parameter regarding the optical focus at different points in time; (i.e., the broadest reasonable interpretation of obtaining a data instance is mere data gathering, which is an insignificant extra solution activity (MPEP 2106.05(g))).
Since the claim does not contain any other additional elements, the amount to integration into a practical application, the claim is directed to an abstract idea.
In Step 2B of the 101 analysis set forth in the 2019 PEG, the examiner has determined that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception:
Regarding limitation (V), under the broadest reasonable interpretation, recite steps of mere data gathering, which has been recognized by the courts as being well-understood, routine, and conventional functions. Specifically, the courts have recognized computer functions directed to mere data gathering as well-understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity when considering evidence in view of Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed, Cir. 2018), see UPSTO Berkheimer Memorandum (April 2018)).
Examiner uses Berkheimer: Option 2, a citation to one or more of the court decisions discussed in MPEP 2106.05(d)(II) as noting well-understood, routine, and conventional nature of the additional elements:
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). See MPEP 2106.05(d)(II).
Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.").
Considering additional elements individually and in combination, and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Therefore, the claim is not patent eligible.
Regarding claim 2, it is dependent upon claim 1 and fails to resolve the deficiencies identified above by integrating the judicial exception into a practical application, or introducing significantly more that the judicial exception. For example, claim 2 recites the parameters associated with the imaging sequence comprise at least one of: an information from the manufacturer of the device including the optical focus; an information from the environment of the optical focus; a sample-specific information. Under the broadest reasonable interpretation, includes a step of observation, evaluation, judgement, and opinion and could be performed mentally like: reading the device manual and seeing the specified parameters, observing the device itself and specifying parameters, or observing the sample and specifying parameters, which are either the mental processes of observation, evaluation, judgement, and/or opinion (MPEP 2106)). Therefore, claim 2 does not solve the deficiencies of claim 1.
Regarding claim 3, it is dependent upon claim 1 and fails to resolve the deficiencies identified above by integrating the judicial exception into a practical application, or introducing significantly more that the judicial exception. For example, claim 3 recites wherein the first drift value is based on image-based measurements of the optical focus performed one after the other. Under the broadest reasonable interpretation, basing a data value off of image measurement is merely selecting a particular data source or type of data to be manipulated, which has been recognized by the courts as being well-understood, routine and conventional functions. Specifically the courts have recognized computer functions directed to selecting a particular data source or type of data to be manipulated as well-understood, routine and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity when considering evidence in view of Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed, Cir. 2018), see UPSTO Berkheimer Memorandum (April 2018)).
Examiner uses Berkheimer: Option 2, a citation to one or more of the court decisions discussed in MPEP 2106.05(g) as noting well-understood, routine, and conventional nature of the additional activities:
Limiting a database index to XML tags, Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d at 1328-29, 121 USPQ2d at 1937.
Therefore claim 3 does not solve the deficiencies of claim 1.
Regarding claim 4, it is dependent upon claim 1 and fails to resolve the deficiencies identified above by integrating the judicial exception into a practical application, or introducing significantly more that the judicial exception. For example, claim 4 recites wherein the first drift value is based on laser-based measurements of the optical focus. Under the broadest reasonable interpretation, basing a data value off of laser measurement is merely selecting a particular data source or type of data to be manipulated, which has been recognized by the courts as being well-understood, routine and conventional functions. Specifically the courts have recognized computer functions directed to selecting a particular data source or type of data to be manipulated as well-understood, routine and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity when considering evidence in view of Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed, Cir. 2018), see UPSTO Berkheimer Memorandum (April 2018)). (see 101 rejection of claim 3 above). Therefore claim 4 does not solve the deficiencies of claim 1.
Regarding claim 5, it is dependent upon claim 1 and fails to resolve the deficiencies identified above by integrating the judicial exception into a practical application, or introducing significantly more that the judicial exception. For example, claim 5 recites wherein the measurements of the optical focus are taken at different positions. Under the broadest reasonable interpretation, obtaining data taken from multiple positions is mere data gathering, which has been recognized by the courts as being well-understood, routine, and conventional functions. Specifically, the courts have recognized computer functions directed to mere data gathering as well-understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity when considering evidence in view of Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed, Cir. 2018), see UPSTO Berkheimer Memorandum (April 2018)).
Examiner uses Berkheimer: Option 2, a citation to one or more of the court decisions discussed in MPEP 2106.05(d)(II) as noting well-understood, routine, and conventional nature of the additional elements:
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). See MPEP 2106.05(d)(II).
Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.").
Therefore claim 5 does not solve the deficiencies of claim 1.
Regarding claim 6, it is dependent upon claim 1 and fails to resolve the deficiencies identified above by integrating the judicial exception into a practical application, or introducing significantly more that the judicial exception. For example, claim 6 recites, prior to setting the optical focus:
storing the first drift value if it is equal to or exceeds the first threshold value; under the broadest reasonable interpretation, storing data is mere data gathering, which has been recognized by the courts as being well-understood, routine, and conventional functions. Specifically, the courts have recognized computer functions directed to mere data gathering as well-understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity when considering evidence in view of Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed, Cir. 2018), see UPSTO Berkheimer Memorandum (April 2018)). The Examiner notes that this limitation recites a contingent limitation. Contingent limitations are not required to be met as they are conditional to a prior condition (MPEP 2111.04). The Examiner recommends the Applicant amend the independent claim to fix the contingency.
Examiner uses Berkheimer: Option 2, a citation to one or more of the court decisions discussed in MPEP 2106.05(d)(II) as noting well-understood, routine, and conventional nature of the additional elements:
Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. See MPEP 2106.05(d)(II).
redetermining the first threshold value based on changed parameters associated with the imaging sequence; under broadest reasonable interpretation, includes a step of observation, evaluation, and judgment and could be performed mentally like determining a value based on observed parameters, which is either a mental process of observation/evaluation/judgement (MPEP 2106).
comparing the first drift value with the redetermined first threshold value; under broadest reasonable interpretation, includes a step of observation, evaluation, and judgment and could be performed mentally like comparing two values, which is either a mental process of observation/evaluation/judgement (MPEP 2106).
setting the optical focus based on the first drift value when the first drift value does not impermissibly exceed the redetermined first threshold value. Under broadest reasonable interpretation, includes a step of observation, evaluation, and judgment and could be performed mentally like determining, through a look-up table, the best optical focus to set based on received information, which is either a mental process of observation/evaluation/judgement (MPEP 2106). The Examiner notes that this limitation recites a contingent limitation. Contingent limitations are not required to be met as they are conditional to a prior condition (MPEP 2111.04). The Examiner recommends the Applicant amend the independent claim to fix the contingency.
Therefore claim 6 does not solve the deficiencies of claim 1.
Regarding claim 7, it is dependent upon claim 1 and fails to resolve the deficiencies identified above by integrating the judicial exception into a practical application, or introducing significantly more that the judicial exception. For example, claim 7 recites:
obtaining a second drift value; under broadest reasonable interpretation of obtaining a data instance is mere data gathering, which is an insignificant extra solution activity (MPEP 2106.05(g)). Specifically, the courts have recognized computer functions directed to mere data gathering as well-understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity when considering evidence in view of Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed, Cir. 2018), see UPSTO Berkheimer Memorandum (April 2018)). (See 101 rejection of claim 1 above, specifically step 2B).
comparing the second drift value with the first threshold value; under broadest reasonable interpretation, includes a step of observation, evaluation, and judgment and could be performed mentally like comparing two values, which is either a mental process of observation/evaluation/judgement (MPEP 2106).
setting the optical focus based on the second drift value when it does not exceed the first threshold value. Under broadest reasonable interpretation, includes a step of observation, evaluation, and judgment and could be performed mentally like determining, through a look-up table, the best optical focus to set based on received information, which is either a mental process of observation/evaluation/judgement (MPEP 2106). The Examiner notes that this limitation recites a contingent limitation. Contingent limitations are not required to be met as they are conditional to a prior condition (MPEP 2111.04). The Examiner recommends the Applicant amend the independent claim to fix the contingency.
Therefore claim 7 does not solve the deficiencies of claim 1.
Regarding claim 8, it is dependent upon claim 1 and fails to resolve the deficiencies identified above by integrating the judicial exception into a practical application, or introducing significantly more that the judicial exception. For example, claim 8 recites:
obtaining a second threshold value; under broadest reasonable interpretation of obtaining a data instance is mere data gathering, which is an insignificant extra solution activity (MPEP 2106.05(g)). Specifically, the courts have recognized computer functions directed to mere data gathering as well-understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity when considering evidence in view of Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed, Cir. 2018), see UPSTO Berkheimer Memorandum (April 2018)). (See 101 rejection of claim 1 above, specifically step 2B).
obtaining a second drift value; under broadest reasonable interpretation of obtaining a data instance is mere data gathering, which is an insignificant extra solution activity (MPEP 2106.05(g)). Specifically, the courts have recognized computer functions directed to mere data gathering as well-understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity when considering evidence in view of Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed, Cir. 2018), see UPSTO Berkheimer Memorandum (April 2018)). (See 101 rejection of claim 1 above, specifically step 2B).
comparing the second drift value with the second threshold value; under broadest reasonable interpretation, includes a step of observation, evaluation, and judgment and could be performed mentally like comparing two values, which is either a mental process of observation/evaluation/judgement (MPEP 2106).
setting the optical focus based on the second drift value when it does not exceed the second threshold value. Under broadest reasonable interpretation, includes a step of observation, evaluation, and judgment and could be performed mentally like determining, through a look-up table, the best optical focus to set based on received information, which is either a mental process of observation/evaluation/judgement (MPEP 2106). The Examiner notes that this limitation recites a contingent limitation. Contingent limitations are not required to be met as they are conditional to a prior condition (MPEP 2111.04). The Examiner recommends the Applicant amend the independent claim to fix the contingency.
Therefore claim 8 does not solve the deficiencies of claim 1.
Regarding claim 9, in step I of the 101 analysis set forth in MPEP 2106, the claim recites a computer-based method of setting an optical focus for a sample, comprising the steps of:. The claim recites a method. A method is one of the four statutory categories of invention.
In Step 2A, Prong 1 of the 101 analysis set forth in MPEP 2106, the examiner has determined that the following limitations recite a process that, under broadest reasonable interpretation, covers a mental process or mathematical concept but for the recitation of generic computer components:
determining, for an imaging sequence of the sample, a first threshold value for a drift of the optical focus based on parameters associated with the imaging sequence; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like determining a value based on observed parameters, which is either a mental process of observation/evaluation/judgement (MPEP 2106)).
comparing the first drift value with the first threshold value; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like comparing two values, which is either a mental process of observation/evaluation/judgement (MPEP 2106)).
determining a second threshold value, wherein the second threshold value is based on the first drift value when the first drift value is smaller than the first threshold value; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like determining a value based on other known values, which is either a mental process of observation/evaluation/judgement (MPEP 2106)).
comparing the second drift value with the second threshold value; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like comparing two values, which is either a mental process of observation/evaluation/judgement (MPEP 2106)).
setting the optical focus based on the second drift value when the second drift value does not exceed the second threshold value. (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like determining, through a look-up table, the best optical focus to set based on received information, which is either a mental process of observation/evaluation/judgement (MPEP 2106)). The Examiner notes that this limitation recites a contingent limitation. Contingent limitations are not required to be met as they are conditional to a prior condition (MPEP 2111.04). The Examiner recommends the Applicant amend the independent claim to fix the contingency.
If the claim limitations, under their broadest reasonable interpretation, covers activities classified under Mental processes: concepts performed in the human mind (including observation, evaluations, judgement, or opinion) (see MPEP 2106.04(a)(2), subsection (III)) or Mathematical concepts: mathematical relationships, mathematical formulas or equations, or mathematical calculations (see MPEP 2106.04(a)(2), subsection (I)). Accordingly, the claim recites an abstract idea.
In Step 2A, Prong 2 of the 101 analysis, set forth in MPEP 2106, the examiner has determined that the following additional elements do not integrate this judicial exception into a practical application:
obtaining a first drift value, wherein the first drift value is based on measurements of at least one parameter regarding the optical focus at different points in time; (i.e., the broadest reasonable interpretation of obtaining a data instance is mere data gathering, which is an insignificant extra solution activity (MPEP 2106.05(g))).
obtaining a second drift value; (i.e., the broadest reasonable interpretation of obtaining a data instance is mere data gathering, which is an insignificant extra solution activity (MPEP 2106.05(g))).
Since the claim does not contain any other additional elements, the amount to integration into a practical application, the claim is directed to an abstract idea.
In Step 2B of the 101 analysis set forth in the 2019 PEG, the examiner has determined that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception:
Regarding limitations (VI) and (VII), under the broadest reasonable interpretation, recite steps of mere data gathering, which has been recognized by the courts as being well-understood, routine, and conventional functions. Specifically, the courts have recognized computer functions directed to mere data gathering as well-understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity when considering evidence in view of Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed, Cir. 2018), see UPSTO Berkheimer Memorandum (April 2018)).
Examiner uses Berkheimer: Option 2, a citation to one or more of the court decisions discussed in MPEP 2106.05(d)(II) as noting well-understood, routine, and conventional nature of the additional elements:
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). See MPEP 2106.05(d)(II).
Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.").
Considering additional elements individually and in combination, and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Therefore, the claim is not patent eligible.
Regarding claim 10, in step I of the 101 analysis set forth in MPEP 2106, the claim recites a computer-based method of setting an optical focus for a sample, comprising the steps of:. The claim recites a method. A method is one of the four statutory categories of invention.
In Step 2A, Prong 1 of the 101 analysis set forth in MPEP 2106, the examiner has determined that the following limitations recite a process that, under broadest reasonable interpretation, covers a mental process or mathematical concept but for the recitation of generic computer components:
determining, for an imaging sequence of the sample, a first threshold value for a drift of the optical focus based on parameters associated with the imaging sequence; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like determining a value based on observed parameters, which is either a mental process of observation/evaluation/judgement (MPEP 2106)).
comparing the first drift value with the first threshold value; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like comparing two values, which is either a mental process of observation/evaluation/judgement (MPEP 2106)).
setting the optical focus based on the first drift value when the first drift value does not impermissibly exceed the first threshold value, (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like determining, through a look-up table, the best optical focus to set based on received information, which is either a mental process of observation/evaluation/judgement (MPEP 2106)). The Examiner notes that this limitation recites a contingent limitation. Contingent limitations are not required to be met as they are conditional to a prior condition (MPEP 2111.04). The Examiner recommends the Applicant amend the independent claim to fix the contingency.
wherein impermissible exceedance is determined based on at least one of: a duration of exceedance of the first threshold value, or an amount of exceedance of the first threshold value; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like comparing values and/or observing a duration of time, which is either a mental process of observation/evaluation/judgement (MPEP 2106)). The Examiner notes that this limitation recites a contingent limitation. Contingent limitations are not required to be met as they are conditional to a prior condition (MPEP 2111.04). The Examiner recommends the Applicant amend the independent claim to fix the contingency.
determining a second threshold value, wherein the second threshold value is based on one of a laser-based measurement or an image-based measurement of the optical focus; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like determining a value based on observed parameters, which is either a mental process of observation/evaluation/judgement (MPEP 2106)).
determining a second drift value, wherein the determination of the second drift value is based on the other of the laser-based measurement or the image-based measurement of the optical focus; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like determining a value based on observed parameters, which is either a mental process of observation/evaluation/judgement (MPEP 2106)).
comparing the second drift value with the second threshold value; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like comparing two values, which is either a mental process of observation/evaluation/judgement (MPEP 2106)).
setting the optical focus based on the second drift value when the second drift value does not exceed the second threshold value. (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like determining, through a look-up table, the best optical focus to set based on received information, which is either a mental process of observation/evaluation/judgement (MPEP 2106)). The Examiner notes that this limitation recites a contingent limitation. Contingent limitations are not required to be met as they are conditional to a prior condition (MPEP 2111.04). The Examiner recommends the Applicant amend the independent claim to fix the contingency.
If the claim limitations, under their broadest reasonable interpretation, covers activities classified under Mental processes: concepts performed in the human mind (including observation, evaluations, judgement, or opinion) (see MPEP 2106.04(a)(2), subsection (III)) or Mathematical concepts: mathematical relationships, mathematical formulas or equations, or mathematical calculations (see MPEP 2106.04(a)(2), subsection (I)). Accordingly, the claim recites an abstract idea.
In Step 2A, Prong 2 of the 101 analysis, set forth in MPEP 2106, the examiner has determined that the following additional elements do not integrate this judicial exception into a practical application:
obtaining a first drift value, wherein it is based on measurements of at least one parameter regarding the optical focus at different points in time; (i.e., the broadest reasonable interpretation of obtaining a data instance is mere data gathering, which is an insignificant extra solution activity (MPEP 2106.05(g))).
Since the claim does not contain any other additional elements, the amount to integration into a practical application, the claim is directed to an abstract idea.
In Step 2B of the 101 analysis set forth in the 2019 PEG, the examiner has determined that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception:
Regarding limitation (IX), under the broadest reasonable interpretation, recites steps of mere data gathering, which has been recognized by the courts as being well-understood, routine, and conventional functions. Specifically, the courts have recognized computer functions directed to mere data gathering as well-understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity when considering evidence in view of Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed, Cir. 2018), see UPSTO Berkheimer Memorandum (April 2018)).
Examiner uses Berkheimer: Option 2, a citation to one or more of the court decisions discussed in MPEP 2106.05(d)(II) as noting well-understood, routine, and conventional nature of the additional elements:
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). See MPEP 2106.05(d)(II).
Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.").
Considering additional elements individually and in combination, and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Therefore, the claim is not patent eligible.
Regarding claim 11, it is dependent upon claim 10 and fails to resolve the deficiencies identified above by integrating the judicial exception into a practical application, or introducing significantly more that the judicial exception. For example, claim 11 recites wherein the laser-based measurement of the optical focus is performed with a higher repetition frequency than the image-based measurement of the optical focus. Under the broadest reasonable interpretation, includes a step of observation, evaluation, judgement, and opinion and could be performed mentally like getting a data value more repeatedly from one source than another source, which is either the mental processes of observation, evaluation, judgement, and/or opinion (MPEP 2106)). Therefore, claim 11 does not solve the deficiencies of claim 10.
Regarding claim 12, it is dependent upon claim 1 and fails to resolve the deficiencies identified above by integrating the judicial exception into a practical application, or introducing significantly more that the judicial exception. For example, claim 12 recites wherein the first threshold value is determined by machine learning and based on information in a database. Under the broadest reasonable interpretation, merely recite steps that apply machine learning to threshold value determination, which represents merely adding the words “apply it”, or an equivalent, which are not indicative of an inventive concept (MPEP 2106.05(f)). Therefore, claim 12 does not solve the deficiencies of claim 1.
Regarding claim 13, in step I of the 101 analysis set forth in MPEP 2106, the claim recites a computer-based method of setting an optical focus, comprising the steps of:. The claim recites a method. A method is one of the four statutory categories of invention.
In Step 2A, Prong 1 of the 101 analysis set forth in MPEP 2106, the examiner has determined that the following limitations recite a process that, under broadest reasonable interpretation, covers a mental process or mathematical concept but for the recitation of generic computer components:
determining a second search area based on at least one of the following information: the first drift value; the first focus value; (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like deciding on an area based on gathered information, which is either a mental process of evaluation/judgement (MPEP 2106)).
setting the optical focus based on a measurement performed within the second search area. (i.e., the broadest reasonable interpretation includes a step of observation, evaluation, and judgment and could be performed mentally like determining, through a look-up table, the best optical focus to set based on received information, which is either a mental process of observation/evaluation/judgement (MPEP 2106)). The Examiner notes that this limitation recites a contingent limitation. Contingent limitations are not required to be met as they are conditional to a prior condition (MPEP 2111.04). The Examiner recommends the Applicant amend the independent claim to fix the contingency.
If the claim limitations, under their broadest reasonable interpretation, covers activities classified under Mental processes: concepts performed in the human mind (including observation, evaluations, judgement, or opinion) (see MPEP 2106.04(a)(2), subsection (III)) or Mathematical concepts: mathematical relationships, mathematical formulas or equations, or mathematical calculations (see MPEP 2106.04(a)(2), subsection (I)). Accordingly, the claim recites an abstract idea.
In Step 2A, Prong 2 of the 101 analysis, set forth in MPEP 2106, the examiner has determined that the following additional elements do not integrate this judicial exception into a practical application:
obtaining a first search area for measurements regarding the optical focus; (i.e., the broadest reasonable interpretation of obtaining a data instance is mere data gathering, which is an insignificant extra solution activity (MPEP 2106.05(g))).
obtaining a first drift value and/or a first focus value from measurements within the first search area; (i.e., the broadest reasonable interpretation of obtaining a data instance is mere data gathering, which is an insignificant extra solution activity (MPEP 2106.05(g))).
Since the claim does not contain any other additional elements, the amount to integration into a practical application, the claim is directed to an abstract idea.
In Step 2B of the 101 analysis set forth in the 2019 PEG, the examiner has determined that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception:
Regarding limitations (III) and (IV), under the broadest reasonable interpretation, recite steps of mere data gathering, which has been recognized by the courts as being well-understood, routine, and conventional functions. Specifically, the courts have recognized computer functions directed to mere data gathering as well-understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity when considering evidence in view of Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed, Cir. 2018), see UPSTO Berkheimer Memorandum (April 2018)).
Examiner uses Berkheimer: Option 2, a citation to one or more of the court decisions discussed in MPEP 2106.05(d)(II) as noting well-understood, routine, and conventional nature of the additional elements:
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). See MPEP 2106.05(d)(II).
Considering additional elements individually and in combination, and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Therefore, the claim is not patent eligible.
Regarding claim 14, it is dependent upon claim 13 and fails to resolve the deficiencies identified above by integrating the judicial exception into a practical application, or introducing significantly more that the judicial exception. For example, claim 14 recites:
determining a threshold value for a drift of the optical focus, wherein the threshold value is based on the second search area; under broadest reasonable interpretation, includes a step of observation, evaluation, and judgment and could be performed mentally like deciding on a threshold value based on gathered information, which is either a mental process of observation/evaluation/judgement (MPEP 2106).
obtaining a drift value, wherein the drift value is based on measurements regarding the optical focus at different points in time; under broadest reasonable interpretation of obtaining a data instance is mere data gathering, which is an insignificant extra solution activity (MPEP 2106.05(g)). Specifically, the courts have recognized computer functions directed to mere data gathering as well-understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity when considering evidence in view of Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed, Cir. 2018), see UPSTO Berkheimer Memorandum (April 2018)). (See 101 rejection of claim 1 above, specifically step 2B).
comparing the drift value with the threshold value; under broadest reasonable interpretation, includes a step of observation, evaluation, and judgment and could be performed mentally like comparing two values, which is either a mental process of observation/evaluation/judgement (MPEP 2106).
outputting the drift value if the drift value does not exceed the threshold value. Under the broadest reasonable interpretation, outputting data is mere data gathering, which has been recognized by the courts as being well-understood, routine, and conventional functions. Specifically, the courts have recognized computer functions directed to mere data gathering as well-understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity when considering evidence in view of Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed, Cir. 2018), see UPSTO Berkheimer Memorandum (April 2018)). (See 101 rejection of claim 1 above, specifically step 2B).
Therefore claim 14 does not solve the deficiencies of claim 13.
Regarding claim 15, it is dependent upon claim 1 and fails to resolve the deficiencies identified above by integrating the judicial exception into a practical application, or introducing significantly more that the judicial exception. For example, claim 15 recites a medical device with autofocus, configured to perform the method of claim 1. Under the broadest reasonable interpretation, merely recite steps that apply machine learning to threshold value determination, which represents merely adding the words “apply it”, or an equivalent, which are not indicative of an inventive concept (MPEP 2106.05(f)). Therefore, claim 15 does not solve the deficiencies of claim 1.
Regarding claim 16, it is dependent upon claim 1 and fails to resolve the deficiencies identified above by integrating the judicial exception into a practical application, or introducing significantly more that the judicial exception. For example, claim 16 recites a medical device with autofocus and configured to communicate with a device that performs the method of claim 1. Under the broadest reasonable interpretation, merely recite steps that apply machine learning to threshold value determination, which represents merely adding the words “apply it”, or an equivalent, which are not indicative of an inventive concept (MPEP 2106.05(f)). Therefore, claim 16 does not solve the deficiencies of claim 1.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 3-4, 7, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 211627931 U) in view of Asukabe et al. (USPGPub 20200077030 A1).
Regarding claim 1, Li teaches a computer-based method of setting an optical focus for a sample (¶2, This utility model relates to the field of autofocus technology, and more specifically, to a real-time autofocus system for a microscope; and ¶55, The computer control system runs an image detection algorithm on the linear spot image to calculate the defocusing amount of the microscope system under the current field of view), comprising the steps of: determining, for an imaging sequence of the sample, a first threshold value for a drift of the optical focus based on parameters associated with the imaging sequence (¶4, Autofocus technology is a key technology for stable imaging in microscopy systems. It can compensate for focus drift caused by changes in ambient temperature, mechanical vibration, and motion vibration during long-term image data acquisition; ¶57, Step S240, repeat steps S210 to S230 until the defocus amount in the current field of view is less than the set threshold; NOTE: the fact that there is a threshold to be exceeded means that a threshold has been determined; and ¶19, Calculate the binarization segmentation threshold for the original image); obtaining a first drift value (¶30, By performing sub-pixel-level precision detection on the real-time focus state of the microscopic system, the amount of defocus drift is calculated; and ¶55, The computer control system runs an image detection algorithm on the linear spot image to calculate the defocusing amount of the microscope system under the current field of view), comparing the first drift value with the first threshold value (¶57, Step S240, repeat steps S210 to S230 until the defocus amount in the current field of view is less than the set threshold); and setting the optical focus based on the first drift value when the first drift value does not impermissibly exceed the first threshold value, wherein impermissible exceedance is determined based on at least one of: a duration of exceedance of the first threshold value, or an amount of exceedance of the first threshold value (¶56, The motor controller compensates for the defocusing amount; and NOTE: this is a contingent limitation and under BRI need not be taught (MPEP 2111.04 II)). However, Li fails to explicitly teach wherein the first drift value is based on measurements of at least one parameter regarding the optical focus at different points in time.
However, Asukabe teaches wherein the first drift value is based on measurements of at least one parameter regarding the optical focus at different points in time (¶70, the determination unit 511 may calculate a change inclination of the lens position and the defocus amount at predetermined time intervals in the predetermined period TW, determine as being a monotonous change in a case where an average of accumulated values of the calculated change inclination is equal to or less than a preset threshold value, and determine as not being a monotonous change in a case where the average of the accumulated values exceeds the preset threshold value).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Li to incorporate the teachings of Asukabe to determine a single drift value from an average of multiple drift values in order to decrease the amount of data being processed, thereby increasing the speed of the processing.
Regarding claim 3, Li as modified by Asukabe teaches the method according to claim 1, wherein the first drift value is based on image-based measurements of the optical focus performed one after the other (Li, ¶55, The computer control system runs an image detection algorithm on the linear spot image to calculate the defocusing amount of the microscope system under the current field of view).
Regarding claim 4, Li as modified by Asukabe teaches the method according to claim 1, wherein the first drift value is based on laser-based measurements of the optical focus (Li, ¶59, this invention uses the reflected light spot of near-infrared or infrared laser at the glass slide interface to analyze and determine the defocus state of the microscopic system).
Regarding claim 7, Li as modified by Asukabe teaches the method according to claim 1, comprising the steps of: obtaining a second drift value; comparing the second drift value with the first threshold value (Li, ¶55, The computer control system runs an image detection algorithm on the linear spot image to calculate the defocusing amount of the microscope system under the current field of view; ¶56, The motor controller compensates for the defocusing amount; and ¶57, Step S240, repeat steps S210 to S230); setting the optical focus based on the second drift value when it does not exceed the first threshold value (NOTE: this is a contingent limitation and under BRI need not be taught (MPEP 2111.04 II)).
Regarding claim 15, Li as modified by Asukabe teaches a medical device with autofocus, configured to perform the method of claim 1 (Li, ¶2, This utility model relates to the field of autofocus technology, and more specifically, to a real-time autofocus system for a microscope; and see ¶4 for further details).
Regarding claim 16, Li as modified by Asukabe teaches a medical device with autofocus and configured to communicate with a device that performs the method of claim 1 (Li, ¶2, This utility model relates to the field of autofocus technology, and more specifically, to a real-time autofocus system for a microscope; see ¶4 for further details; and ¶86, Computer-readable program instructions may be executed entirely on the user's computer, partially on the user's computer, as a standalone software package, partially on the user's computer and partially on a remote computer, or entirely on a remote computer or server).
Claims 2 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 211627931 U) in view of Asukabe et al. (USPGPub 20200077030 A1) as applied to claim 1 above, and further in view of Ishii (USPGPub 20210314481 A1).
Regarding claim 2, Li as modified by Asukabe teaches the imaging sequence and the first threshold (Li, ¶4, Autofocus technology is a key technology for stable imaging in microscopy systems. It can compensate for focus drift caused by changes in ambient temperature, mechanical vibration, and motion vibration during long-term image data acquisition; ¶57, Step S240, repeat steps S210 to S230 until the defocus amount in the current field of view is less than the set threshold; NOTE: the fact that there is a threshold to be exceeded means that a threshold has been determined; and ¶19, Calculate the binarization segmentation threshold for the original image). However, the combination fails to explicitly teach the parameters associated with the imaging sequence comprise at least one of: an information from the manufacturer of the device including the optical focus; an information from the environment of the optical focus; a sample-specific information.
However, Ishii teaches the parameters associated with the imaging sequence comprise at least one of: an information from the manufacturer of the device including the optical focus; an information from the environment of the optical focus; a sample-specific information (¶43, the system controller 209 determines whether or not the reliability of the focus detecting processing acquired in the step S402 is higher than a preset reliability threshold 2. If the reliability is higher than the reliability threshold 2, the flow proceeds to the step S404, otherwise the flow proceeds to the step S413. The reliability threshold 2 is a value such that when the reliability is less than the reliability threshold 2, the accuracy of the defocus amount cannot be guaranteed but the focus position direction of the object can be guaranteed).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Li and Asukabe to incorporate the teachings of Ishii to have the threshold value based off the focus information of the device in order to properly assess when the device is defocused.
Regarding claim 8, Li as modified by Asukabe teaches the method according to claim 1, comprising the steps of: obtaining a second drift value (Li, ¶55, The computer control system runs an image detection algorithm on the linear spot image to calculate the defocusing amount of the microscope system under the current field of view; ¶56, The motor controller compensates for the defocusing amount; and ¶57, Step S240, repeat steps S210 to S230 until the defocus amount in the current field of view is less than the set threshold). However, the combination fails to explicitly teach obtaining a second threshold value; and comparing the second drift value with the second threshold value.
However, Ishii teaches obtaining a second threshold value; and comparing the second drift value with the second threshold value (see figure 11, maxder threshold (i.e. second threshold); and ¶100, it is determined whether or not the steepness maxder (normalized maxder) normalized in the step S1001 is equal to or less than a maxder threshold. If the normalized steepness maxder is equal to or less than the maxder threshold, the flow proceeds to the step S1003, otherwise the flow proceeds to the step S1005); setting the optical focus based on the second drift value when it does not exceed the second threshold value (NOTE: this is a contingent limitation and under BRI need not be taught (MPEP 2111.04 II)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Li and Asukabe to incorporate the teachings of Ishii to provide a second threshold in order to determine the reliability of the focus values.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 211627931 U) in view of Asukabe et al. (USPGPub 20200077030 A1) as applied to claim 1 above, and further in view of Sticker et al. (USPGPub 20220252856 A1).
Regarding claim 5, Li as modified by Asukabe teaches measuring the optical focus (Li, ¶57, Step S240, repeat steps S210 to S230 until the defocus amount in the current field of view is less than the set threshold). However, the combination fails to explicitly teach wherein the measurements of the optical focus are taken at different positions.
However, Sticker teaches wherein the measurements of the optical focus are taken at different positions (abstract, A method for determining the optimal position of the focal plane for examining a specimen by microscopy can include a) illuminating the specimen with light and recording images at different positions of the focal plane to provide a stack of intensity images, b) calculating a phase image from at least two intensity images… d) calculating at least one focus measure value for each phase image).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Li and Asukabe to incorporate the teachings of Sticker to measure the focus at a plurality of different positions as this is common in the examination of a specimen in microscopy and allows for the proper focus position to be obtained.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 211627931 U) in view of Asukabe et al. (USPGPub 20200077030 A1) and Ishii (USPGPub 20210314481 A1).
Regarding claim 9, Li teaches a computer-based method of setting an optical focus for a sample (¶2, This utility model relates to the field of autofocus technology, and more specifically, to a real-time autofocus system for a microscope; and ¶55, The computer control system runs an image detection algorithm on the linear spot image to calculate the defocusing amount of the microscope system under the current field of view), comprising the steps of: determining, for an imaging sequence of the sample, a first threshold value for a drift of the optical focus based on parameters associated with the imaging sequence (¶4, Autofocus technology is a key technology for stable imaging in microscopy systems. It can compensate for focus drift caused by changes in ambient temperature, mechanical vibration, and motion vibration during long-term image data acquisition; ¶57, Step S240, repeat steps S210 to S230 until the defocus amount in the current field of view is less than the set threshold; NOTE: the fact that there is a threshold to be exceeded means that a threshold has been determined; and ¶19, Calculate the binarization segmentation threshold for the original image); obtaining a first drift value (¶30, By performing sub-pixel-level precision detection on the real-time focus state of the microscopic system, the amount of defocus drift is calculated; and ¶55, The computer control system runs an image detection algorithm on the linear spot image to calculate the defocusing amount of the microscope system under the current field of view), comparing the first drift value with the first threshold value (¶57, Step S240, repeat steps S210 to S230 until the defocus amount in the current field of view is less than the set threshold); and obtaining a second drift value (¶55, The computer control system runs an image detection algorithm on the linear spot image to calculate the defocusing amount of the microscope system under the current field of view; ¶56, The motor controller compensates for the defocusing amount; and ¶57, Step S240, repeat steps S210 to S230 until the defocus amount in the current field of view is less than the set threshold). However, Li fails to explicitly teach wherein the first drift value is based on measurements of at least one parameter regarding the optical focus at different points in time; determining a second threshold value, and comparing the second drift value with the second threshold value.
However, Asukabe teaches wherein the first drift value is based on measurements of at least one parameter regarding the optical focus at different points in time (¶70, the determination unit 511 may calculate a change inclination of the lens position and the defocus amount at predetermined time intervals in the predetermined period TW, determine as being a monotonous change in a case where an average of accumulated values of the calculated change inclination is equal to or less than a preset threshold value, and determine as not being a monotonous change in a case where the average of the accumulated values exceeds the preset threshold value).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Li to incorporate the teachings of Asukabe to determine a single drift value from an average of multiple drift values in order to decrease the amount of data being processed, thereby increasing the speed of the processing. However, the combination fails to explicitly teach determining a second threshold value, and comparing the second drift value with the second threshold value.
However, Ishii teaches determining a second threshold value; and comparing the second drift value with the second threshold value (see figure 11, maxder threshold (i.e. second threshold); and ¶100, it is determined whether or not the steepness maxder (normalized maxder) normalized in the step S1001 is equal to or less than a maxder threshold. If the normalized steepness maxder is equal to or less than the maxder threshold, the flow proceeds to the step S1003, otherwise the flow proceeds to the step S1005); wherein the second threshold value is based on the first drift value, when the first drift value is smaller than the first threshold value (NOTE: this is a contingent limitation and under BRI need not be taught (MPEP 2111.04 II)); and setting the optical focus based on the second drift value when the second drift value does not exceed the second threshold value (NOTE: this is a contingent limitation and under BRI need not be taught (MPEP 2111.04 II)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Li and Asukabe to incorporate the teachings of Ishii to provide a second threshold in order to determine the reliability of the focus values.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 211627931 U) in view of Asukabe et al. (USPGPub 20200077030 A1) as applied to claim 1 above, and further in view of Li et al. (USPGPub 20170178296) (hereinafter Li2).
Regarding claim 12, Li as modified by Asukabe teaches determining the first threshold (Li, ¶57, Step S240, repeat steps S210 to S230 until the defocus amount in the current field of view is less than the set threshold; NOTE: the fact that there is a threshold to be exceeded means that a threshold has been determined). However, the combination fails to explicitly teach wherein the first threshold value is determined by machine learning and based on information in a database.
However, Li2 teaches wherein the first threshold value is determined by machine learning and based on information in a database (¶53, The threshold is able to be any threshold, such as a threshold that is empirically determined or trained using machine learning for each different camera, lens, aperture and zoom setting).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Li and Asukabe to incorporate the teachings of Li2 to use a machine learning model to determine the thresholds as, over time, the MLM can be trained and additionally adjust the thresholds based on the device’s parameters.
Allowable Subject Matter
Claim 6 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 101 and 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.
Regarding claim 6, the prior art of record individually or combined fails to teach the method according to claim 1 as claimed, comprising, prior to setting the optical focus, the steps of: storing the first drift value if it is equal to or exceeds the first threshold value; more specifically in combination with redetermining the first threshold value based on changed parameters associated with the imaging sequence; comparing the first drift value with the redetermined first threshold value; and setting the optical focus based on the first drift value when the first drift value does not impermissibly exceed the redetermined first threshold value.
Claims 10-11 and 13-14 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Regarding claim 10, the prior art of record individually or combined fails to teach a computer-based method as claimed of setting an optical focus for a sample, comprising the steps of: determining, for an imaging sequence of the sample, a first threshold value for a drift of the optical focus based on parameters associated with the imaging sequence; obtaining a first drift value, wherein it is based on measurements of at least one parameter regarding the optical focus at different points in time; comparing the first drift value with the first threshold value; setting the optical focus based on the first drift value when the first drift value does not impermissibly exceed the first threshold value, wherein impermissible exceedance is determined based on at least one of: a duration of exceedance of the first threshold value, or an amount of exceedance of the first threshold value; determining a second threshold value, more specifically in combination with wherein the second threshold value is based on one of a laser-based measurement or an image-based measurement of the optical focus; determining a second drift value, and wherein the determination of the second drift value is based on the other of the laser-based measurement or the image-based measurement of the optical focus; comparing the second drift value with the second threshold value; and setting the optical focus based on the second drift value when the second drift value does not exceed the second threshold value.
Claim 11 would be allowable for its dependency on claim 10.
Regarding claim 13, the prior art of record individually or combined fails to teach a computer-based method as claimed of setting an optical focus, comprising the steps of: obtaining a first search area for measurements regarding the optical focus; obtaining a first drift value and/or a first focus value from measurements within the first search area; more specifically in combination with determining a second search area based on at least one of the following information: the first drift value; the first focus value; and setting the optical focus based on a measurement performed within the second search area.
Claim 14 would be allowable for its dependency on claim 13.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Abe et al. (USPGPub 20170180629 A1) Abe teaches the storage of drift values (¶51, the focus detection unit 207 performs defocus value detection. The defocus value detected here is ultimately stored in the EEPROM 211 (defocus value storage area) in association with the image that is captured in step S109). However, Abe fails to teach the specific conditions claimed.
Akiba et al. (USPGPub 20070222886 A1): Akiba teaches calculating the threshold at a plurality of different times due to a plurality of different conditions (¶16, The threshold calculating section may calculate the evaluation value threshold from the measured maximum value, an immediately prior-evaluation value obtained at a timing of an immediately prior measurement at a position where the measured maximum value was obtained and an immediately after-evaluation value obtained at a timing of an immediately after measurement at the position where the measured maximum value was obtained, based on the measured maximum value and one of the immediately prior-evaluation value and the immediately after-evaluation value). However, Akiba fails to explicitly teach the specific redetermining conditions claimed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIN R GARBER whose telephone number is (571)272-4663. The examiner can normally be reached M-F 0730-1730.
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/ERIN R GARBER/Examiner, Art Unit 2878
