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 .
Priority
Acknowledgment is made of applicant’s claim for priority under 35 U.S.C. 119 (e) and 120.
Drawings
The originally filed drawings were received on 10/8/2024. These drawings are acceptable.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because of the following informalities:
Abstract, line 1- ‘Disclosed herein are systems’ should read ‘Systems’
Abstract, line 4- ‘and or’ should read ‘and/or’
Abstract, line 5- ‘used in separately’ should read ‘used separately’.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
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 1-19 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.
Claim 1 recites the limitation "the different segments" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-19 are dependent on Claim 1, and hence inherit the deficiencies of Claim 1.
Claim 3 recites the limitation "the scanning direction" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "the brain" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the brain" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the heart" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the optical axis " in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the optical axis" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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, 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.
Claim 1, 10-11, 17, as best understood, is rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. 12133714. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-20 of U.S. Patent No. 12133714 similarly claims and discloses a method (See for example Claim 1; system corresponding to the claimed method) for imaging of a subject of interest, comprising providing (See for example Claim 1, lines 3-4) an excitation beam from an optical beam source; line scanning (See for example Claim 1, lines 5-6 the excitation beam across the subject, by using one or more beam scanners; and performing (See for example Claim 1, lines 7-10), using one or more linear arrays of optical detectors, parallel detection of optical signals from different segments of the subject in response to the excitation beam. Claims 1-20 of U.S. Patent No. 12133714 further similarly claims and discloses providing an optical feedback system comprising an optical detector and slit configured to monitor location of a second order diffraction beam or calibration beam for calibrating location of the excitation beam; and monitoring, using the optical feedback system, location of the excitation beam during scanning (See for example Claim 5); performing nonlinear microscopy (See for example Claim 6); and exciting a plane that is from -80° to 80° at an angle to an optical axis and imaging through a single objective (See for example Claim 7).
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, 5-9, 11-17, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hillman (U.S. Patent Application Publication US 2019/0302437 A1), of record.
Hillman discloses a system (See for example Abstract; Figures 1-7) for imaging of a subject of interest (See for example 106 in Figure 1; region near 220, 222 in Figure 2), comprising an optical beam source (See for example 102, 122 in Figure 1; 202 in Figure 2) configured to provide an excitation beam; one or more beam scanners (See for example 116 in Figure 1; 206, 210 in Figure 2) configured for line scanning of the excitation beam across the subject; and one or more linear arrays of optical detectors (See for example 132 in Figure 1; 240 in Figure 2) configured for parallel detection of optical signals from different segments of the subject in response to the excitation beam. Hillman further discloses measuring, by the one or more linear arrays of optical detectors, fluorescence optical signals from the subject in response to excitation from the excitation beam (See for example Abstract; Paragraphs 0004, 0054, 0060); performing flow cytometry wherein the subject is in motion during the scanning (See for example Paragraphs 0014, 0035, 0087); the subject comprises one or more cells or three-dimensional tissue constructs (See for example Paragraphs 0014, 0035, 0087); the subject is a complete living organism (See for example Paragraphs 0014, 0035, 0087); the subject is a non-biological object (See for example Paragraphs 0051, 0072, imaging fluorescent beads); performing nonlinear microscopy (See for example Figures 1-2; Paragraphs 0030, 0054, 0060); performing two-photon or multi-photon fluorescence microscopy (See for example Figures 1-2; Paragraphs 0030, 0054, 0060); performing second or third harmonic generation microscopy (See for example Figures 1-2; Paragraphs 0020, 0030, 0054, 0060); imaging at least a part of the brain of the subject (See for example Paragraphs 0014, 0088, 0090, 0104); in vivo imaging of at least part of the brain of the subject (See for example Paragraphs 0014, 0088, 0090, 0104); imaging an active function of the heart of the subject (See for example Paragraphs 0014, 0087); and exciting a plane that is from -80° to 80° at an angle to the optical axis and imaging through a single objective (See for example 108, 137 in Figure 1; 216, 220 in Figure 2).
Allowable Subject Matter
Claims 2-4, 18-19 would be allowable if rewritten to overcome the rejection(s) under 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARNEL C LAVARIAS whose telephone number is (571)272-2315. The examiner can normally be reached M-F 10:30 AM-7 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone Allen can be reached at 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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ARNEL C. LAVARIAS
Primary Examiner
Group Art Unit 2872
6/22/2026
/ARNEL C LAVARIAS/Primary Examiner, Art Unit 2872
Prosecution Insights