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 .
Election/Restrictions
Applicant's election with traverse of figure 3 and claims 1, 2, 6-7, 14-15 in the reply filed on 5/28/2026 is acknowledged. The traversal is on the ground(s) that “the Office has not established that the pending claims lack a generic claim or that the identified species require restriction if a generic claim is ultimately found allowable. Applicant therefore respectfully requests examination of the elected Figure 3 species and of claims 1, 2, 6, 7, 14, and 15. Applicant further requests withdrawal of the restriction requirement, or, at minimum, rejoinder of any non-elected claims if a generic claim is found allowable.” In response, the examiner notes that upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
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 image acquisition part in claims 1 and 14-15; single Bessel beam generation part in claims 1-2, 6-7, and 14-15; multiple Bessel beam generation part in claims 1-2 and 14-15; a two-photon fluorescence signal image acquisition part in claim 1; and a second harmonic signal image acquisition part in claim 7. Note that the other elected claims have sufficient structure that they don’t invoke 112f.
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 § 102/103
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 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.
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.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Truong (US 20110122488 A1; cited by Applicant).
Regarding claim 1, Truong teaches an open-top two-photon light sheet microscope comprising:
a laser irradiation part configured to irradiate a sample with a two-photon excitation laser beam (figure 6a; paragraphs 34 and 82-83); and
an image acquisition part (CCD) configured to receive a two-photon fluorescence signal (paragraphs 34, 87, and 95; figure 6a) and a second harmonic signal generated by the irradiating laser beam (paragraphs 12, 47, 119 and figure 6a; as explained in paragraph 119, the same setup detects both the two-photon fluorescence signal and the second harmonic signal),
wherein the laser irradiation part comprises a single Bessel beam generation part (paragraph 21) configured to generate a single Bessel beam or a multiple Bessel beam generation part configured to generate multiple Bessel beams (paragraphs 21 and 75; claim 10)
For the reasons given above, the examiner considers Truong as anticipating the claim. Alternatively, if one were to consider the Bessel beam generation to be a different embodiment, then Truong teaches that a single Bessel beam generation part (paragraph 21) configured to generate a single Bessel beam or a multiple Bessel beam generation part configured to generate multiple Bessel beams (paragraphs 21 and 75; claim 10) provides the benefit of a larger field of view and are particularly advantageous for two-photon excitation (paragraphs 21 and 75; claim 10). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the laser irradiation part of Truong comprise a single Bessel beam generation part configured to generate a single Bessel beam or a multiple Bessel beam generation part configured to generate multiple Bessel beams in order to obtain the benefit of a larger field of view and because Truong teaches it’s particularly advantageous for two-photon excitation.
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Regarding claim 2, Truong teaches the laser irradiation part comprises a first objective lens (EO-1 and EO-2; figure 6A; paragraph 85), and the image acquisition part comprises a second objective lens (DO; figure 6A; paragraphs 86-87),
wherein the first objective lens and the second objective lens are orthogonal to each other (figure 6A).
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.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Truong as applied to claim 2 above, and further in view of Lee (US 20240175798 A1; also published as WO2022208061A1).
Regarding claim 6, Truong teaches the multiple Bessel beam generation part comprises: a light source part (laser) configured to generate a laser beam (figure 6A);; a spatial light modulator configured to convert the collimated line-shaped beam into the multiple Bessel beams (paragraph 21); a first cylindrical lens configured to convert a point-shaped laser beam generated from the light source part into a line-shaped beam (paragraph 75); and a y-direction scan mirror configured to generate multiple Bessel sheet beams by scanning the converted multiple Bessel beams in a y direction (paragraphs 62-63).
Truong doesn’t explicitly teach a second cylindrical lens configured to organize the converted line-shaped beam into a collimated beam.
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Like Truong (and like the instant application), Lee is directed to light sheet microscopy and teaches adding a cylindrical lens in order to recollimated, or in other words, it teaches a first cylindrical lens (8a) configured to generate from the light source part into a line-shaped beam; and a second cylindrical lens (8b) configured to organize the converted line-shaped beam into a collimated beam (paragraph 54).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the multiple Bessel beam generation part comprises: a first cylindrical lens configured to convert a point-shaped laser beam generated from the light source part into a line-shaped beam; a second cylindrical lens configured to organize the converted line-shaped beam into a collimated beam – in order to ensure the light is collimated as it enters the downstream optical elements.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Truong and Lee as applied to claim 6 above, and further in view of Fujimoto (US 20180259762 A1).
Regarding claim 7, Truong doesn’t explicitly teach the image acquisition part comprises: a dichroic mirror configured to receive a reaction beam generated from the sample and separate the reaction beam into the two-photon fluorescence signal and the second harmonic signal; a two-photon fluorescence signal image acquisition part configured to receive the two-photon fluorescence signal passing through the dichroic mirror; and a second harmonic signal image acquisition part configured to receive the second harmonic signal reflected from the dichroic mirror.
However, Truong teaches that the image acquisition part can receive two-photon fluorescence signal and the second harmonic signal (see citations above). Additionally, Fujimoto is directed to a multi-photon microscope and teaches the image acquisition part comprises: a dichroic mirror (220) configured to receive a reaction beam generated from the sample and separate the reaction beam into the multi-photon fluorescence signal and the second harmonic signal (paragraph 62); a two-photon fluorescence signal image acquisition part configured to receive the two-photon fluorescence signal passing through the dichroic mirror; and a second harmonic signal image acquisition part configured to receive the second harmonic signal reflected from the dichroic mirror (paragraph 62; and figure 2, where the filters are 221 and detectors are 223).
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It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the image acquisition part comprises: a dichroic mirror configured to receive a reaction beam generated from the sample and separate the reaction beam into the two-photon fluorescence signal and the second harmonic signal; a two-photon fluorescence signal image acquisition part configured to receive the two-photon fluorescence signal passing through the dichroic mirror; and a second harmonic signal image acquisition part configured to receive the second harmonic signal reflected from the dichroic mirror – in order to implement the measurement of the two-photon fluorescence and second harmonic signal taught by Truong using a system that separates them into distinct channels and allows the accurate measurement of each.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Truong as applied to claim 1 above, and further in view of Siebenmorgen (US 20190170995 A1).
Regarding claim 14, Truong teaches a sample holder configured to hold the sample (paragraph 86); and a motorized stage configured to transport the sample holder in an x direction (paragraph 86),
Truong doesn’t explicitly teach the sample holder comprises a liquid prism to eliminate an off-axis optical aberration.
However, Truong teaches the sample holder comprises a liquid and a prism (paragraph 86). Additionally, Siebenmorgen is directed to light sheet microscopy and teaches the sample holder comprises a liquid prism to eliminate an off-axis optical aberration (paragraph 12).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the sample holder comprises a liquid prism to eliminate an off-axis optical aberration in order to reduce aberration as is a motivation in the prior art as evidenced by Siebenmorgen, paragraph 12, and thereby increase measurement accuracy.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Truong and Fujimoto.
Regarding claim 15, Truong teaches an operating method of an open-top two-photon light sheet microscope, the method comprising (see the citations in the above device for more details):
a laser beam irradiation step of irradiating a sample with a laser beam (figure 6a; paragraphs 34 and 82-83); and
an image acquisition step by an image acquisition part (CCD) receiving a two-photon fluorescence signal (paragraphs 34, 87, and 95; figure 6a) and a second harmonic signal generated by the irradiating laser beam (paragraphs 12, 47, 119 and figure 6a; as explained in paragraph 119, the same setup detects both the two-photon fluorescence signal and the second harmonic signal),
wherein the laser beam irradiation step comprises:
a laser beam generation step by a light source part generating a laser beam (figure 6a; paragraphs 34 and 82-83);
a single Bessel beam generation step (paragraph 21) or a multiple Bessel beam generation step by a single Bessel beam generation part or a multiple Bessel beam generation part converting the laser beam generated in the laser beam irradiation step into a single Bessel beam or multiple Bessel beams (paragraphs 21 and 75; claim 10); and
a scanning step by a y-direction scan mirror generating a single Bessel sheet beam or multiple Bessel sheet beams by scanning the single Bessel beam or the multiple Bessel beams converted in the single Bessel beam generation step or the multiple Bessel beam generation step in a y direction (paragraphs 62-63),
wherein the image acquisition step comprises:
an image separation step by a reaction beam passing through a second objective lens into the two-photon fluorescence signal and the second harmonic signal (paragraphs 12, 47, 119 and figure 6a);
a two-photon fluorescence signal image acquisition step by a two-photon fluorescence signal image acquisition part receiving the two-photon fluorescence signal passing through (paragraphs 12, 47, 119 and figure 6a); and
a second harmonic signal image acquisition step by a second harmonic signal image acquisition part receiving the second harmonic signal reflected (paragraphs 12, 47, 119 and figure 6a).
Truong doesn’t explicitly teach an image separation step by a dichroic mirror separating a reaction beam passing through a second objective lens into the two-photon fluorescence signal and the second harmonic signal;
However, Truong teaches that the image acquisition part can receive two-photon fluorescence signal and the second harmonic signal (see citations above). Additionally, Fujimoto is directed to a multi-photon microscope and teaches the image acquisition part comprises: a dichroic mirror (220) configured to receive a reaction beam generated from the sample and separate the reaction beam into the multi-photon fluorescence signal and the second harmonic signal (paragraph 62); a two-photon fluorescence signal image acquisition part configured to receive the two-photon fluorescence signal passing through the dichroic mirror; and a second harmonic signal image acquisition part configured to receive the second harmonic signal reflected from the dichroic mirror (paragraph 62; and figure 2, where the filters are 221 and detectors are 223).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the image acquisition part comprises: a dichroic mirror configured to receive a reaction beam generated from the sample and separate the reaction beam into the two-photon fluorescence signal and the second harmonic signal; a two-photon fluorescence signal image acquisition part configured to receive the two-photon fluorescence signal passing through the dichroic mirror; and a second harmonic signal image acquisition part configured to receive the second harmonic signal reflected from the dichroic mirror – in order to implement the measurement of the two-photon fluorescence and second harmonic signal taught by Truong using a system that separates them into distinct channels and allows the accurate measurement of each.
Additional Prior Art
US 2021/0161385 discloses a two-photon light miscroscope
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUFUS L PHILLIPS whose telephone number is (571)270-7021. The examiner can normally be reached M-Th, 2 -10 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached at (571) 270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUFUS L PHILLIPS/ Examiner, Art Unit 2877
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