DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Information Disclosure Statement
The information disclosure statement filed 06 June 2025 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. § 112(f) 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), 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) 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) 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. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. § 112(f), 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), Applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. § 112(f) (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).
Claims 23 and 32
Claims 23 and 32 are interpreted under 35 U.S.C. § 112(f).
Regarding claims 23 and 32, the limitation “acousto-optic device” uses the generic placeholder “device” 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. Accordingly, this limitation is interpreted under 35 U.S.C. § 112(f) as corresponding to:
a 100 MHz acousto-optic deflector (AOD) driven by a comb of radiofrequencies produced by a direct digital synthesis (DDS) radiofrequency (RF) comb generator, wherein the comb is phase-engineered to minimize peak-to-average power ratio, wherein the AOD produces multiple deflected optical beams with a range of both output angles and frequency shifts, wherein the AOD produces a single diffracted first-order beam for each radiofrequency comb frequency; or
an acousto-optic frequency shifter, driven by a single radiofrequency tone produced by a DDS RF tone generator, which proves a local oscillator beam; (Applicant’s specification, ¶ 39-40, fig. 1); and
equivalents thereof. Regarding the interpretations of claims using generic placeholders, see MPEP § 2181(I)(A).
Claim Rejections — 35 U.S.C. § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. §§ 102–-----103 (or as subject to pre-AIA 35 U.S.C. §§ 102–103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 21-22 and 29-31
Claims 21-22 and 29-31 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Choi (US 2009/0125242 A1).
Claim 21
Regarding claim 21, Choi discloses an apparatus (cytometry platform; claim 131) comprising: a flow channel (inherent to flow cell; ¶ 100); a light beam generator (12, 18) configured to excite a sample in the flow channel (¶¶ 37, 100; Fig. 1; from ¶ 37: “the laser beam passes through two acousto-optic modulators 28 (AOMs) which shift the frequency of the laser beam by 1250 Hz”); a photodetector (42) configured to measure a fluorescence of the excited sample (¶¶ 37, 100); and a computer-readable memory having instructions to: receive the measured fluorescence; segment the measured fluorescence into a plurality of frames; perform a Fourier transform on at least a portion of the plurality of frames; and generate an image of a phenomena (fluorescence) of the sample based on the transformed frames (¶¶ 37, 94, 101-104, Fig. 1).
Claim 22
Regarding claim 22, Choi discloses the apparatus according to claim 21, wherein the light beam generator comprises a laser (¶ 37).
Claim 29
Regarding claim 29, Choi discloses the apparatus according to claim 21, further comprising a flow cell for propagating the sample through a flow stream (see rejection of claim 21 above).
Claims 30-31
Regarding claims 30-31, see the rejections of claims 21-22 above, mutatis mutandis.
Claim Rejections — 35 U.S.C. § 103
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 C.F.R. § 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.
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1 (1966), that are applied 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.
Claims 24-28 and 33-37
Claims 24-28 and 33-37 are rejected under 35 U.S.C. § 103 as being unpatentable over Choi as applied to claims 21 and 30 above, and further in view of Ragan (US 2011/0320174 A1).
Claim 24
Regarding claim 24, Choi discloses the apparatus according to claim 21, wherein the photodetector comprises a CMOS camera (¶ 37). Choi does not expressly disclose the photodetector comprises a photomultiplier tube (PMT).
Ragan discloses a cytometry platform (¶ 22) and a method including generating a data signal (time traces) comprising a temporal component and applying a Fourier transform to the data signal to generate a waveform (¶ 41, Fig. 9), wherein a photodetector can be a CMOS camera or a PMT (¶ 23).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the invention of Choi in view of the further teachings of Ragan so use a PMT with the predictable result of detecting light with the PMT instead of the CMOS camera because the simple substitution of one known element for another to obtain predictable results has been held to be obvious. See MPEP § 2143.
One would have been motivated to use a PMT to use a detector with relatively less noise as compared to CMOS detectors.
Claim 25
Regarding claim 25, Choi modified teaches the apparatus according to claim 24, wherein photodetector is configured to detect fluorescence from the sample in a plurality of pixels across the irradiated sample (Choi, ¶ 74, claim 54).
Claim 26
Regarding claim 26, Choi modified teaches the apparatus according to claim 25, wherein the memory comprises instructions to determine a temporal component for generating the image (Ragan, ¶ 41, Fig. 9, also disclosing applying a Fourier transform).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have further modified the invention of Choi in view of the further teachings of Ragan with the predictable result of generating a data signal comprising a temporal component and applying a Fourier transform to the data signal to generate waveform.
One would have been motivated to use perform temporal Fourier transform processing to gain an advantage recited in Ragan of obtaining information about “photon migration, fluorescence lifetime, or other time-resolved spectroscopy experiment” (Ragan, ¶ 65).
Claim 27
Regarding claim 27, Choi modified teaches the apparatus according to claim 26, wherein memory comprises instructions to generate a color-mapped image from the plurality of frames (Choi, ¶¶ 29-30; Figs. 13A-14M).
Claim 28
Regarding claim 28, Choi modified teaches the apparatus according to claim 26, wherein the memory comprises instructions to generate an image comprising spatial information based on the transformed frames (Choi, ¶¶ 21-22, 54-62, Figs. 5A-6G).
Claims 33-37
Regarding claims 33-37, see the rejections of claims 24-28 above, respectively, mutatis mutandis.
Claim Rejections — Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937 (CCPA 1982); In re Vogel, 422 F.2d 438 (CCPA 1970); In re Thorington, 418 F.2d 528 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 C.F.R. §§ 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 C.F.R. § 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 C.F.R. § 1.111(a). For a reply to final Office action, see 37 C.F.R. § 1.113(c). A request for reconsideration while not provided for in 37 C.F.R. § 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-37
Claims 21-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-23, 28-34, and 39-42 of copending U.S. patent application 19/021,025 in view of Choi (US 2009/0125242 A1) and Ragan (US 2011/0320174 A1). This is a provisional nonstatutory double patenting rejection.
Claims 21-29
Regarding claims 21-29, reference claims 21-23 and 28-31 anticipate or render obvious instant claims 21-29, as necessary in view of Choi and Ragan as described in the 35 U.S.C. §§ 102-103 rejections above, as follows:
Instant claims
Reference claims
21. An apparatus comprising:
a flow channel;
a light beam generator configured to excite a sample in the flow channel;
a photodetector configured to measure a fluorescence of the excited sample; and
a computer-readable memory having instructions to:
receive the measured fluorescence;
segment the measured fluorescence into a plurality of frames;
perform a Fourier transform on at least a portion of the plurality of frames; and
generate an image of a phenomena of the sample based on the transformed frames.
21. A cytometry platform comprising:
[see rejection above]
a light beam generator configured to illuminate a particle in a flow stream;
a detector configured to measure an emission of the illuminated particle [see also rejection above];
a computer-readable storage medium comprising instructions that, when executed by one or more processing devices:
receive the measured emission;
generate a data signal from the illuminated particle comprising a temporal component [see also rejection above];
apply a Fourier transform to a reference component from illumination of the particle; apply a Fourier transform to the data signal [see also rejection above; and
generate a waveform based on the Fourier transform of the data signal and the Fourier transform of the reference component [see also rejection above]
22. The apparatus according to claim 21,
wherein the light beam generator comprises a laser.
22. The cytometry platform according to claim 21,
wherein the light beam generator comprises a laser.
23. The apparatus according to claim 21,
wherein the light beam generator comprises an acousto-optic device.
23. The cytometry platform according to claim 21,
wherein the light beam generator comprises: a first acousto-optic device for generating a first frequency shifted beam of light; and a second acousto-optic device for generating a second frequency shifted beam of light.
24. The apparatus according to claim 21,
wherein the photodetector comprises a photomultiplier tube (PMT).
28. The cytometry platform according to claim 21,
wherein the photodetector comprises a photomultiplier tube (PMT).
25. The apparatus according to claim 24,
wherein photodetector is configured to detect fluorescence from the sample in a plurality of pixels across the irradiated sample.
29. The cytometry platform according to claim 21,
wherein the photodetector is configured to detect fluorescence from the sample [see also rejection above].
26. The apparatus according to claim 25,
wherein the memory comprises instructions to determine a temporal component for generating the image.
21. … generate a data signal from the illuminated particle comprising a temporal component [see also rejection above]
27. The apparatus according to claim 26,
wherein memory comprises instructions to generate a color-mapped image from the plurality of frames.
31. The cytometry platform according to claim 21,
wherein the instructions further form an image from the waveform [see also rejection above]
28. The apparatus according to claim 26,
wherein the memory comprises instructions to generate an image comprising spatial information based on the transformed frames.
31. The cytometry platform according to claim 21,
wherein the instructions further form an image from the waveform [see also rejection above]
29. The apparatus according to claim 21, further comprising
a flow cell for propagating the sample through a flow stream.
30. The cytometry platform according to claim 21, further comprising
a flow cell for propagating the sample through a flow stream.
Claims 30-37
Regarding claims 30-37, see the rejections of claims 21-28 above, respectively, mutatis mutandis with respect to reference claims 32-34, and 39-42.
Claim Considerations — 35 USC §§ 102-103
Claims 23 and 32
Regarding claims 23 and 32, with reference to representative claim 23, the cited prior art does not expressly disclose or suggest the particularly acousto-optic device, as interpreted under 35 U.S.C. § 112(f) as described above.
Choi (US 2009/0125242 A1) discloses an apparatus (10; ¶ 37, fig. 1) comprising: a light beam generator (12, 28) configured to generate a frequency shifted beam of light (¶ 37, fig. 1; from ¶ 37: “the laser beam passes through two acousto-optic modulators 28 (AOMs) which shift the frequency of the laser beam by 1250 Hz”), an optical component (29, 40, and intervening mirror in fig. 1) for conveying the frequency shifted beam of light to a photodetector 42, means for irradiating a particle in a sample in a flow stream, the photodetector 42 configured to detect light from the irradiated particle in the sample and generate a data signal comprising a temporal component; and a processor 100 comprising memory operably coupled to the processor wherein the memory comprises instructions stored thereon, which when executed by the processor, cause the processor 100 to form an image from the generated data signal (¶ 37, 94, fig. 1). In particular, the frequency shifted beam of light is used as a reference beam and is not used to irradiate a sample in a flow stream. Choi further discloses first and second acousto-optic devices (acousto-optic modulators; ¶ 37).
MacPherson (US 6,396,069) discloses an apparatus (Fig. 4) comprising: a light beam generator component (141); a first optical apparatus (151) configured to direct a first beam along a first optical path and to direct a second beam along a second path; a second optical apparatus (157) configured to combine and direct the first beam with the second beam; and a photodetector (164).
While various systems for flow cytometry were generally known in the art, as were acousto-optic devices, the cited prior art does not expressly disclose or suggest Applicant’s particularly claimed configuration. Accordingly, claims 23 and 34 are not rejected under 35 U.S.C. §§ 102-103.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yamashita (US 2007/0272885 A1) discloses an apparatus including a laser beam source for stimulation that emits a laser beam for stimulation for applying photostimulation to a sample, and an acoustooptic device (Abstract).
Fukumoto (US 2011/0192991 A1) discloses an apparatus including a light source configured to irradiate a microparticle with light; and an acousto-optic modulator configured to diffract fluorescence generated from the microparticle due to the light irradiation (Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLAKE RIDDICK whose telephone number is (571)270-1865. The examiner can normally be reached M - Th 6:30 am - 5:00 pm ET, with flexible scheduling.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uzma Alam can be reached on 571-272-2995. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Blake C. Riddick, Ph.D.
Primary Examiner
Art Unit 2884
/BLAKE C RIDDICK/ Primary Examiner, Art Unit 2884
Prosecution Insights