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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 9-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/29/2026.
Applicant’s election without traverse of Claims 1-8 drawn to Invention I in the reply filed on 6/29/2026 is acknowledged.
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.
The factual inquiries 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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over US 20110316998 A1 to Kishima in view of US 20040223215 A1 to Weiss et al.
Regarding Claim 1. Kishima discloses a sample image optical system, comprising: a fluorescent channel including a first light source (Fig. 1 light source 14); and a bright-field channel including a second light source (Fig. light source 13), wherein a first light of the first light source, which is irradiated onto a sample (Fig. 1 sample SPL) and emitted from the sample, is refracted while passing through the fluorescent channel to produce a fluorescent image of the sample (See Fig. 1 and para 40-42), wherein a second light of the second light source, which passes through the sample, is refracted while passing through the bright-field channel to produce a bright-field image of the sample (See Fig. 1 and para 39 and 43).
Kishima does not specifically disclose that the fluorescent image and the bright-field image overlap with each other by 70% or more.
However, the many benefits and advantages of overlaying a brightfield image and a fluorencent image are well known in the art. Weiss discloses the bright-field image overlap with each other for better image evaluation (See para 5). The amount of overlap between the aforementioned images is a result-effective variable. In that, improved overlap will improve the evaluation of the image.
Therefore, it would have been obvious to a person having ordinary skill in the art before applicant’s effective filing date to include that the fluorescent image and the bright-field image overlap with each other by 70% or more for improved image evaluation is based on a result effective variable and would require routine skill in the art. Furthermore, it has been held that that determining the optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05 (II (A) and (B)).
Regarding Claim 2. Kishima further discloses the bright-field channel includes one or more windows configured such that the second light of the second light source, which passes through the sample, is refracted while passing through the bright-field channel (See Fig. 1 objective lens 12A and image forming lens 12B ).
Regarding Claim 3. Kishima further discloses each of the one or more windows is made of a transparent material (See para 43, and Fig. 1 slide glass SG and cover glass CG).
Regarding Claim 4. Kishima further discloses the fluorescent channel includes a dichroic beam splitter (Fig. 1 dichroic mirror 12C) and an emission filter (Fig. 1 emission filter 12D), and wherein the first light of the first light source, which is irradiated onto the sample and emitted from the sample, is refracted while passing through the dichroic beam splitter and the emission filter to produce the fluorescent image of the sample (See Fig. 1).
Regarding Claim 5. Kishima further discloses the bright-field channel includes a first window and a second window, and wherein the second light of the second light source, which passes through the sample, is refracted while passing through the first window and the second window to produce the bright-field image of the sample (See Fig. 1 slide glass SG and cover glass CG).
Regarding Claim 6. Kishima further discloses the fluorescent channel includes a dichroic beam splitter (Fig. 1 dichroic mirror 12C) and an emission filter (Fig. 1 emission filter 12D), and the first light of the first light source (See Fig. 1), which is irradiated onto the sample and emitted from the sample, is refracted while passing through the dichroic beam splitter and the emission filter to produce the fluorescent image of the sample (as shown in Fig. 1), and wherein the bright-field channel includes a first window and a second window, and the second light of the second light source, which passes through the sample (See Fig. 1 slide glass SG and cover glass CG), is refracted while passing through the first window and the second window to produce the bright-field image of the sample (See Fig. 1).
Regarding Claim 7. Kishima further discloses the first window is arranged at a position corresponding to the dichroic beam splitter, and the second window is arranged at a position corresponding to the emission filter (as shown in Fig. 1).
Regarding Claim 8. Kishima and Weiss further discloses a thickness, a material, and an angle of each of the first window and the second window are set such that the fluorescent image and the bright-field image overlap with each other by 70% or more (See Kishima Fig. 1 and Weiss para 5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDMOND C LAU whose telephone number is (571)272-5859. The examiner can normally be reached M-Th 8am-6pm EST.
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, Jennifer Carruth can be reached at (571) 272-9791. 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.
/EDMOND C LAU/Primary Examiner, Art Unit 2871
Prosecution Insights