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 .
Drawings
2. The drawings contain thirty one sheets of figures 1A-1C, 2A-2B, 3A-3B, 4A-4D, 5-6, 6A-6C, 7-8, 9A-9F, 10-12, 13A-13B, 14-30, 31A-31B and 32A-32C were received on 10/01/2024. These drawings are objected by the examiner for the following reason(s).
3. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the reference “20a” in figure 2B which reference is not mentioned in the description. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
4. 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 following claimed features must be shown or the features canceled from the claim(s). No new matter should be entered.
First, the feature thereof “the object positioned on a focal length of the condenser” as recited in claim 1 on lines 12-13; and
Second, the feature regarding an arrangement of the image capturing module and the condenser as recited in the feature thereof “an image capturing module, the image capturing module coupled to the condenser” as recited in claim1 on line 15.
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.
Specification
5. The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
6. The disclosure is objected to because of the following informalities: a) Paragraph [0053]: “alight” appeared on line 1 of the paragraph should be changed to --a light--; b) Paragraph [0091]: on line 12, “incident light field 901” should be changed to --incident light field 900--, see lines 3-4 of the paragraph. Appropriate correction is required.
Claim Interpretation
7. 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.
8. 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.
9. 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 limitations are:
a) “an image capturing module” as recited in claim 1; and
b) “an operation processing unit” and “a differential phase contrast calculation” as recited in claim 3.
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 § 112
10. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
11. Claims 1-3 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the following reasons.
a) Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claim is rejected because the disclosure does not provide support for the feature thereof “the object positioned on a focal length of the condenser” as recited in the claim on lines 12-13 and the claim is rejected because the disclosure does not provide support for the feature thereof “the image capturing module coupled to the condenser” as recited in the claim on line 15.
Applicant is respectfully invited to review the specification, in particular, in paragraphs [0051]-[0060] and [0090]-[0091] and figs. 2 and 8 which disclose the structure of the system. The mentioned paragraphs, in particular, paragraph [0058], disclose that the object (90) is located/positioned at a focal length of the objective lens (22). The specification does not disclose/support that “the object positioned on a focal length of the condenser” as recited in the claim on lines 12-13.
In the similar manner, the mentioned paragraphs, in particular, paragraph [0059], disclose that the image capturing module (24) is coupled to the objective lens (22). The specification does not disclose/support that “the image capturing module coupled to the condenser” as recited in the claim on line 15.
For the purpose of examination, the features of “the object positioned on a focal length of the condenser” as recited in the claim on lines 12-13 and “the image capturing module coupled to the condenser” as recited in the claim on line 15 are understood as
--the object positioned on a focal length of the objective lens-- and --the image capturing module coupled to the objective lens--, respectively.
b) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
12. 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.
13. Claims 1-3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons:
a) Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons:
a1) the feature thereof “a condenser, the condenser … an object light field” (lines 8-11) is indefinite. What does applicant mean by “an off-axis” light field (line 10)? It is also noted that it is unclear how a condenser can generate a so-called “off-axis” light field from a detection light field as claimed; and
a2) the feature thereof “an objective lens … the object light field” (lines 12-13) is unclear about the structural relationship among the condenser, the object and the objective lens. Does applicant intend to claim that the objective lens is in the same side as the light source module with respect to the condenser? Applicant is respectfully invited to review the feature thereof “a condenser … object light field” recited on lines 8-11 and the feature that “the objective lens receiving the object light field” recited on line 13 which features in combination disclose that the object is located between the condenser and the objective lens.
b) Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “the condenser … in a range of a partially coherent illumination” (lines 1-3). What does applicant mean by “a range of partially coherent illumination” (line 3)?
c) Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “wherein a first optical image … modulation pattern” (lines 6-11). It is unclear about the relationships among the first optical image, the second optical image as recited in the claim with “an optical image” recited in its base claim 1 on lines 16-17. Does the image capturing module generates all optical images from the object light field?
Double Patenting
14. 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, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 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 CFR 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 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 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.
15. Claims 1-3 , as best as understood, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,228,718. Although the claims at issue are not identical, they are not patentably distinct from each other because all features recited in present claims 1-3 are read from features recited in Patent claims 1-3.
In particular, the features recited in present claim 1 are read from features recited in Patent claim 1, and the features recited in present claims 2-3 are read from features recited in Patent claims 2-3, respectively.
It is noted that the Restriction as provided in the parent application No. 18/121,979 was withdrawn in the parent application and all non-elected claims of the mentioned parent application had been rejoined/ examined and allowed.
Claim Rejections - 35 USC § 102
16. 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.
17. 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.
16. Claims 1-2 , as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukutake (US Patent No. 9,599,808, submitted by applicant).
Fukutake discloses a microscope apparatus having an illumination system and an observation system wherein a modulator is located on the illumination system and adapted to vary the light intensity distribution of light emitted from a light source of the illumination system, see columns 1-2.
a) Regarding to present claim 1, the microscope apparatus as described in columns 6-14 and shown in fig. 8 comprises the following features:
a1) an illumination system (52) comprises the following features:
a11) a light source (51) for generating an incident light field;
a12) a light modulation element (58) controlled by a controller (55) for modulating the incident light field into a detection light field wherein the light modulation element produces a light modulation pattern based on the applied controlled signal, and the light modulation pattern varies the light intensity in an optical amplitude gradient in a radial direction, see columns 6-9 and 12-14, and the varied optical amplitude gradient along a radial direction has a center on an optical axis and expands a length from the center, see columns 12-14;
a13) a set of condensers (57, 59) wherein the light modulation element (58) is located/positioned at a Fourier plane of the condenser (59) which condenser is located/positioned on one side of the modulation element (58) for generating an off-axis light field onto an object (S) from the detection light field produced by the light modulation element.
a2) an imaging optical system (53) having an objective lens (60) positioned at one side of the object (90) opposite to the condenser (59) for receiving an object light field from the object (90) wherein the object (90) is located/positioned at a focal length of the objective lens (60).
a3) an imaging capturing system (61, 54, 55) for receiving the object light field for generating optical image corresponding to the varied optical amplitude gradient from the object light field wherein the image capturing system is coupled to the objective lens (60).
b) Regarding to present claim 2, each of the condenser (57, 59) and the objective lens (60) has its own numerical aperture and a ratio of the numerical apertures of the condenser and the objective lens is in a range of partially coherent illumination. Applicant should note that while present claim 2 does not provide any specific limitation for the ratio of numerical apertures of the condenser and the objective lens, see present claim 2 on lines 2-3. It is known to one skilled in the art that any value of a ratio between two lenses is in a range of partially coherent illumination.
Conclusion
18. The US Publication No. 2021/0311294 is cited as of interest in that it discloses a microscope apparatus having an illumination system and an observation system wherein a modulator is located on the illumination system and adapted to vary the light intensity distribution of light emitted from a light source of the illumination system. This US Publication is sufficient to reject the present claims 1-2; however, the Publication and the US Patent No. 9,599,808 each does not discloses an operation processing unit for generating controlling signals to vary a plurality of varied optical amplitude pattern to different optical images to reconstructing depth information of a surface of an object as recited in the present claim 3.
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
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, STEPHONE B. ALLEN can be reached on (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
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