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 .
Examiner Notes
Examiner suggests that the applicant incorporates the limitations of dependent claim(s) 3-5 into independent claim(s) 1. Since the § 103 rejection(s) of claim(s) 3-5 rely on additional references that are also applied in view of the § 102(a)(1) rejection(s) of claim(s) 1, such an amendment may warrant further searching, consideration, and examination of the resulting claim scope. Thus, such an amendment could facilitate adequate advancement of prosecution.
Election/Restrictions
Claims 2, and 7-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 August 2026.
Applicant’s election without traverse of Group I, Claim(s) 1, and 3-6 and Species A: Figure(s) 1-2, and 4a-4b in the reply filed on 14 August 2026 is acknowledged.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the tunable focus unit comprises a deformable mirror, and the tunable focus unit comprises a tunable lens. must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Examiner submits that it is unclear as to which elements in the drawings are specifically directed to the tunable lens and deformable mirror. Examiner further submits that there is no reference character(s) provided for such elements. Examiner suggests specifically pointing out which lens is directed to which element within the as-filed drawings.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 3-5 are objected to because of the following informalities:
With respect to Claim 3, “axially scans a focus of the light sheet the sample” is grammatically incorrect and is unclear.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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, and 3-6 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.
With respect to Claim 1, “a photographing unit that photographs two image information of the sample simultaneously” is unclear and ambiguous. It is unclear if the claim limitation refers to photographing two images, two sets of image data, or two types of information derived from a single image. A person having ordinary skill in the art would not be able to reasonably ascertain whether the claim limitation requires the unit to generate two distinct images or if one image containing two categories of information would suffice. There is also no objective standard for this requirement, for it is unclear if the “two image information” corresponds to different wavelengths, focal planes, locations, imaging modalities, or any other parameter.
For the prosecution on merits, examiner interprets the claimed subject matter described above as introducing optional elements, optional structural limitations, optional expressions, and optional functionality within a rapid optical tissue scanner.
Applicant should clarify the claim limitations as appropriate. Care should be taken during revision of the description and of any statements of problem or advantage, not to add subject-matter which extends beyond the content of the application (specification) as originally filed.
If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection of the claims under 35 U.S.C. 112, second paragraph, is appropriate. See MPEP 2173.05(a), MPEP 2143.03(I), and MPEP 2173.06.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawano et al. US 20040113059 A1 (herein after “Kawano”).
With respect to Claim 1, Kawano discloses a rapid optical tissue scanner (fig. 9), the scanner (fig. 9) comprising:
a light source unit (laser 13 with fiber 13a; [0062]) radiating a light source beam (laser light via laser 13; [0062]; fig. 9) onto a sample (laser light onto sample body 10; [0067-71]);
a cylindrical lens (lens 3 consists of at least one cylindrical lens; [0063]) transforming the light source beam (laser light via laser 13; [0062]; fig. 9) into a light sheet (cylindrical lens 3 converts parallel laser beam to cross-sectional shape aspect ratio of the beam; [0063]);
a sample mounting unit (surface of sample body 10; [0067]) where the sample (sample body 10; [0067-71]) is mounted (fig. 9);
an objective lens (objective lens 9; [0067]) that is disposed between (as seen in fig. 9) the cylindrical lens (lens 3 consists of at least one cylindrical lens; [0063]) and the sample mounting unit (surface of sample body 10; [0067]) for both irradiating (light irradiated on sample body; [0073]) the sample (laser light onto sample body 10; [0067-71]) with the light source beam (laser light via laser 13; [0062]; fig. 9) transformed into the light sheet (cylindrical lens 3 converts parallel laser beam to cross-sectional shape aspect ratio of the beam; [0063]) and for collecting emission light (light focused on sample body surface is reflected or converted to fluorescence by fluorescence generating material to be transmitted through objective lens 9; [0068]) from the sample (sample body 10; [0067-71]); and
a photographing unit (plurality of photo detectors 12; [0068], [0082]) that receives an emission beam (plurality of photo detectors are employed, light from sample body is separated for each wavelength; [0082]) generated in the sample (sample body 10; [0067-71]) from the objective lens (objective lens 9; [0067]) and photographs two image information (first and second sets of image data are synthesized, creates two-dimensional image of sample body; [0073-75]) of the sample (sample body 10; [0067-71]) simultaneously (light of these respective wavelengths can be simultaneously photographed; [0082]).
With respect to Claim 6, Kawano discloses the scanner (fig. 9) of claim 1, wherein the light source unit (laser 13 with fiber 13a; [0062]) comprises:
a first light source (laser 13; [0062]) radiating a first light source beam (laser light via laser 13; [0062]; fig. 9) of a first wavelength (laser light source 13, to employ a wavelength laser, or laser of plurality of wavelengths; [0069]);
a second light source (illumination light source can be designed to deal with variety of light sources; [0026], [0037]) radiating a second light source beam (employment of laser beam or white light source; [0026], [0037]) of a second wavelength (laser that emits plurality of wavelengths or laser beam combiner in which plurality of laser are combined can be employed; [0069]); and
a light integration dichroic mirror (beam splitter 15 can comprise a dichroic mirror, light from sample body separated for each wavelength by dichroic mirrors 18a to 18c so that light of respective wavelengths can be simultaneously photographed; [0064], [0082]) integrating (laser beam combiner in which a plurality of laser are combined can be employed; [0069]) the first light source beam (laser light via laser 13; [0062]; fig. 9) and the second light source beam (laser light via laser 13; [0062]; fig. 9) into the light source beam (laser light via laser 13; [0062]; fig. 9).
Claim Rejections - 35 USC § 103
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.
Claim(s) 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kawano et al. US 20040113059 A1 (herein after “Kawano”) in view of Fahrbach US 20190212536 A1.
With respect to Claim 3, Kawano discloses the scanner (fig. 9) of claim 1.
Kawano does not appear to explicitly teach the following limitation(s): further comprising: a tunable focus unit that is disposed between the cylindrical lens (lens 3 consists of at least one cylindrical lens; [0063]) and the sample mounting unit (surface of sample body 10; [0067]) OR between the light source unit (laser 13 with fiber 13a; [0062]) and the cylindrical lens (lens 3 consists of at least one cylindrical lens; [0063]) and axially scans a focus of the light sheet (cylindrical lens 3 converts parallel laser beam to cross-sectional shape aspect ratio of the beam; [0063]) the sample (sample body 10; [0067-71]; Kawano).
However, in the same field of endeavor, Fahrbach teaches a light sheet microscope ([0013]) comprising beam modulating means (beam shaping optics 114; [0126]) including a tunable lens (lens 120 is designed as a tunable lens, i.e. as an optical element whose optical effect is variably controllable; [0126]) that is within a beam source for shifting the depth of focus area of an illumination beam (illumination beam 16 within sample; [0057], [0124]). Fahrbach further teaches the beam modulating means (beam shaping optics 114; [0126]) being disposed outside of the beam source component (fig. 18 is alternative to solution shown in fig. 7, in which displacement of depth of focus area of illumination beam 16 by means of illumination objective 50 takes place, instead, technical function is realized by beam source 114 itself in embodiment of fig. 18; [0124]) and axially scanning a focus of a light sheet (beam source 114 designed to shift depth of focus area of illumination beam 16 within sample; [0124]).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the confocal microscope of Kawano to include the technical features of incorporating beam shaping optics comprising a tunable focus lens and disposing said beam shaping optics directly outside of a beam source, for the purpose of achieving displacement of the depth of focus area, providing a variably adjustable optical effect, and controlling lens focal length to acquire an illumination beam that can be convergent or divergent as desired, as taught by Fahrbach ([0057], [0124-126]). Furthermore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to dispose a tunable focus unit between a cylindrical lens and sample mounting unit or between a light source and a cylindrical lens, since it has been held that rearranging parts of an invention involves only routine skill in the art. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), and MPEP § 2144.
With respect to Claim 4, Kawano in view of Fahrbach teaches the scanner (fig. 9) of claim 3, wherein the tunable focus unit (beam shaping optics 114 including a tunable lens 120; [0126]; in view of Fahrbach) comprises a deformable mirror (light reflected or converted to fluorescence by sample body 10 is imaged on DMD light modulation member 4; [0075]; Kawano).
Kawano does not appear to explicitly teach the following limitation(s): a tunable focus unit (See claim 3).
Fahrbach further teaches beam shaping optics containing at least one spatial light modulator ([0075]), wherein the light modulator can be realized, for example, in the form of a convex or concave axicon, a grating, a hologram or a deformable mirror ([0075]).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the confocal microscope of Kawano to combine the technical features of incorporating beam shaping optics comprising a tunable focus lens and deformable mirror, for the purpose of achieving displacement of the depth of focus area, providing a variably adjustable optical effect, controlling lens focal length to acquire an illumination beam that can be convergent or divergent as desired, simultaneously modulating phase and intensity, and modulating an intensity of an illumination beam in order to generate a desired beam profile, as taught by Fahrbach ([0057], [0124-126]).
With respect to Claim 5, Kawano in view of Fahrbach teaches the scanner (fig. 9) of claim 3.
Kawano does not appear to explicitly teach the following limitation(s): wherein the tunable focus unit comprises a tunable lens.
However, in the same field of endeavor, Fahrbach teaches a light sheet microscope ([0013]) comprising beam modulating means (beam shaping optics 114; [0126]) including a tunable lens (lens 120 is designed as a tunable lens, i.e. as an optical element whose optical effect is variably controllable; [0126]) that is within a beam source for shifting the depth of focus area of an illumination beam (illumination beam 16 within sample; [0057], [0124]).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the confocal microscope of Kawano to include the technical feature of incorporating beam shaping optics comprising a tunable focus lens, for the purpose of achieving displacement of the depth of focus area, providing a variably adjustable optical effect, and controlling lens focal length to acquire an illumination beam that can be convergent or divergent as desired, as taught by Fahrbach ([0057], [0124-126]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Knebel et al. US 20190243114 A1 discloses a SPIM microscope with a sequential light sheet substantially similar to that of the claimed invention. Lippert et al. US 20090237765 A1 discloses an optical arrangement for the production of a light sheet substantially similar to that of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K MUHAMMAD whose telephone number is (571)272-4210. The examiner can normally be reached Monday - Thursday 1:00pm - 9:30pm EDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K MUHAMMAD/Examiner, Art Unit 2872 17 August 2026
/SHARRIEF I BROOME/Primary Examiner, Art Unit 2872
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