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 .
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.
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Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of U.S. Patent No. 12,120,407. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 14 of U.S. Patent No. 12,120,407 contains every element of claims 1-3 of the instant application and thus anticipate the claim(s) of the instant application. Claims 1-3 of the instant application therefore is/are not patently distinct from the earlier patent claims and as such is/are unpatentable over obvious-type double patenting. A later application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
Regarding claims 1-3,
Instant Application
Is met by U.S. Patent 12,120,407 claim 1
1. An optical adaptor for imaging a sample using a hand-held imaging device that has a
light source, a camera, and a computer processor, comprising:
an enclosure;
a sample receptacle for receiving the sample and positioning the sample; and
a lever,
wherein the lever comprises at least one optical element and is moveable
between a first position and a second position.
An optical adapter for imaging a sample using a hand-held imaging device that has a light source, a camera, and a computer processor, comprising:
an enclosure; a cavity within the enclosure;
a lever within the cavity; a receptacle for receiving a sample holder and positioning the sample within a microscopic field of view; and an optical fiber configured to receive the light from the light source and to illuminate the receptacle,
wherein the lever comprises at least one optical element and is configured to be moveable between a first position and a second position,.
2. The optical adaptor of claim 1, further comprising a rubber door to cover the sample receptacle to prevent ambient light entering the optical assembly through the receptacle.
14. The optical adapter of claim 1, further comprising a rubber door to cover the receptacle to prevent ambient light entering the enclosure through the receptacle.
3. The optical adapter of claim 1, wherein the lever is configured to be moveable between a first position and a second position, wherein (i) in the first position, said imaging device is capable of imaging a sample in a bright field mode through a first optical pathway, and
(ii) in the second position, said imaging device is capable of imaging the sample in a
fluorescence excitation mode through a second optical pathway.
wherein (i) in the first position, said imaging device is capable of imaging the sample in a bright field mode, and
(ii) in the second position, said imaging device is capable of imaging the sample in a fluorescence excitation mode
Claim Objections
Claims 18 and 19 are objected to because of the following informalities: Claim 18 needs to end with a period and claim 19 should be dependent upon claim 7. Appropriate correction is required.
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) 1 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fletcher et al. (US PGPUB 20130300919), Rijken et al. (US Patent # 9,625,786) and in further view of Larson (US Patent # 10,488,642).
[Claim 1]
Fletcher teaches an optical adaptor for imaging a sample using a hand-held imaging device that has a light source (fig. 2, LED flash 24), a camera (22), and a computer processor (Paragraph 73), comprising:
an enclosure (Figs. 1a and 1b);
a lever (66), wherein the lever is moveable between a first position and a second position (Paragraph 57 for lenses and Paragraph 54 for polarizing filters 52 and 54, figs. 4-7, Optical assembly 16 may further allow for adjustment of the optical components (e.g. lens 62). For example, optical assembly 16 may comprise a lens slider (not shown) similar to slider 66 in FIGS. 4-6 to allow for one or more lenses to be moved in and out of the optical path (lens stacking), or for lens position to be moved along the optical axis. Removing all attachment lenses 62 from the path provides the device's 12 standard imaging characteristics, while adding one or more lenses 62 in the optical path modifies the imaging characteristics to suit the application. Thus, single optical assembly 16 may be configured to provide variable magnification and numerical aperture characteristics).
Fletcher teaches a lever but fails to teach lever comprising at least one optical element. However Rijken teaches The back focus adjusting module 3 comprises a slider 30 (Broadly is a lever), which is a holder or a track for two optical filters 31a, b. The slider 30 can be inserted in a guiding slot 32 of the back focus adjusting module 3 in a sliding direction 33, which is perpendicular to the linear direction 9. The slider 30 can be arranged in two sliding positions, whereby in a first sliding position, the first optical filter 31a, for example an IR-filter, and in a second sliding position the second optical filter 31b, for example a dummy filter, is placed in the optical path between the object lens and the image capturing unit (col. 6 lines 56-65).
Therefore taking the combined teachings of Fletcher and Rijken, it would be obvious to one skilled in the art before the effective filing date of the invention to have been motivated to have a lever comprising at least one optical element in order to easily support the polarizing filters in and out of the filter without increasing the cost of the equipment.
Fletcher in view of Rijken fails to teach a sample receptacle for receiving the sample and positioning the sample. However Larson teaches in FIGS. 11A-11B illustrate close up views of a lens structure 100g, which has a lens 104g and protrusion features 106g. A microscope slide arrangement 404 having a specimen thereon is placed in contact with the protrusion features 106g. In FIG. 11A, no opposing pressure is applied between the lens structure 100g and the microscope slide 404. In FIG. 11B, both compressive force and lateral force is applied to one or both of the microscope slide arrangement 404 and the smartphone 404a. The lateral force may be applied to desirably align or otherwise position the specimen above the image sensor (col. 16 lines 36-46).
Therefore taking the combined teachings of Fletcher, Rijken and Larson, it would be obvious to one skilled in the art before the effective filing date of the invention to have been motivated to have a sample receptacle for receiving the sample and positioning the sample in order to change the optical properties of the lens to provide better clarity of the image focused on the image sensor or a different magnification.
[Claim 4]
Fletcher teaches wherein the enclosure comprises an entrance aperture for light entrance (illumination opening 44), an exposure aperture for imaging (fig. 4, imaging opening 42), and an exit aperture for illuminating the sample (fiber optic bundle 50a).
[Claim 5]
Fletcher teaches a lens arranged to provide a field of view for the camera (Paragraph 46, A lens 62 (or series of lenses) is preferably disposed within the optical tube 56, imaging opening 42 or imaging port 32 (shown in preferred configuration in imaging opening 42). The lens 62 is preferably configured to provide magnification of the target anatomy (e.g. ear drum, etc.).
[Claim 6]
Fletcher teaches wherein the enclosure houses the light guide for accepting light from the light source through the entrance aperture and illuminating the sample (Paragraph 49, The back wall 68 of the housing 40 further comprises an illumination opening 44 that is configured to line up with a fiber optic bundle 50a, illumination port 34 and flash 24. Fiber optic bundle 50a generally comprises one or more optical fibers, configured with end glow or side glow characteristics to suit the particular application or anatomy being imaged).
Claim(s) 7, 8, 11, 16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Fletcher et al. (US PGPUB 20130300919), Rijken et al. (US Patent # 9,625,786), Larson (US Patent # 10,488,642) and in further view of Lee et al. (US PGPUB 20160114730).
[Claim 7]
Fletcher in view of Rijken and Larson fails to teach wherein the lever comprises an upper-level plane, a tilted plane, and lower-level plane. However Lee teaches a lever 240 having a lower end (figs. 8a and 8b), a tilted plane 220 and an upper end 220. Therefore taking the combined teachings of Fletcher, Rijken, Larson and Lee, it would be obvious to one skilled in the art before the effective filing date of the invention to have been motivated to have the lever comprises an upper-level plane, a tilted plane, and lower-level plane in order to consume less space and keep the structure small.
[Claim 8]
Lee teaches wherein the upper-level plane and lower-level plane are at different heights (see fig. 8a).
[Claim 11]
Fletcher in view of Rijken and Larson fails to teach wherein the lever comprises at least a light diffuser to homogenize light. However Lee teaches since the rear side object (for example, a following vehicle) entering from the rear side passes through the transparent fixed plate 110 is focused on the tilting reflective plate 120 tilted rearward, and at the same time reflectivity of the rear light (for example, light from headlamps of the following vehicles) entering the tilting reflective plate 120 from the rear side is lowered, a driver may be prevented from being blinded during night driving (Paragraph 80). . Therefore taking the combined teachings of Fletcher, Rijken, Larson and Lee, it would be obvious to one skilled in the art before the effective filing date of the invention to have been motivated to have the lever comprises at least a light diffuser to homogenize light in order for the light to fall uniformly on an image sensor.
[Claim 16]
Larson teaches a sample slider comprising a movable arm and a track frame (In FIG. 11B, both compressive force and lateral force is applied to one or both of the microscope slide arrangement 404 and the smartphone 404a. The lateral force may be applied to desirably align or otherwise position the specimen above the image sensor. The compressive force may be applied to compress the protrusion feature 106g and thereby change the optical properties of the lens 104g. For example, compressing the protrusion features 106g may alter the optical properties to provide better clarity of the image focused on the image sensor or a different magnification.) in order to focus the sample to get a good quality picture.
[Claim 19]
Fletcher in view of Rijken and Larson fails to teach wherein the upper-level plane and lower-level are joined by the tilted plane. However Lee teaches a lever 240 having a lower end (figs. 8a and 8b), a tilted plane 220 and an upper end 220. The lower end 240 is joined to the upper end 220 by a tilted plane 220. Therefore taking the combined teachings of Fletcher, Rijken, Larson and Lee, it would be obvious to one skilled in the art before the effective filing date of the invention to have been motivated to have the lever comprises wherein the upper-level plane and lower-level are joined by the tilted plane in order for the light to fall uniformly on an image sensor.
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Fletcher et al. (US PGPUB 20130300919), Rijken et al. (US Patent # 9,625,786), Larson (US Patent # 10,488,642) and in further view of Ma et al. (US PGPUB 20170059462).
[Claim 2]
Fletcher in view of Rijken and Larson fails to teach a rubber door to cover the sample receptacle to prevent ambient light entering the optical assembly through the receptacle. However Ma teaches A rubber sleeve 9 is fixed around the round hole 8, one end of the rubber sleeve 9 is glued to the periphery of the round hole 8 on the top thermal insulating plate of the first box body 10, and the other end of the rubber sleeve 9 is fitted over the plunger 7 of the rock press machine in a way that the incident ambient light can be blocked there and the plunger 7 of the press machine can move up and down freely, so as to adapt to coal rock test blocks 17 in different sizes (Paragraph 26). Therefore taking the combined teachings of Fletcher, Rijken, Larson and Ma, it would be obvious to one skilled in the art before the effective filing date of the invention to have been motivated to have a rubber door to cover the sample receptacle to prevent ambient light entering the optical assembly through the receptacle in order to reduce the interference in the imaging from the ambient light.
Allowable Subject Matter
Claims 3, 9, 10, 12, 13, 14, 15, 17 and objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art fails to teach or suggest as in claim 3, “3. The optical adapter of claim 1, wherein the lever is configured to be moveable between a first position and a second position, wherein (i) in the first position, said imaging device is capable of imaging a sample in a bright field mode through a first optical pathway, and (ii) in the second position, said imaging device is capable of imaging the sample in a fluorescence excitation mode through a second optical pathway”, claim 9, “9. The optical adaptor of claim 8, wherein the upper-level plane comprises at least one optical element, and the lower-level plane comprises at least one optical element”, claim 10, “wherein the tilted plane comprises a reflective mirror and is connected to a lower-level plane”, claim 14, “wherein the first set of one or more optical elements comprises a first right angle mirror and a second right angle mirror, wherein the first right angle mirror and the second right angle mirror are located at the first pathway and are arranged to reflect the light from the light source toward the exposure aperture”, claim 15, “wherein the upper-level plane comprises a band-pass optical filter” and claim 17, “wherein the second optical pathway comprises a second set of optical elements includes a mirror and an optical absorber, wherein the mirror reflects light to obliquely illuminate the sample, and the optical absorber absorbs light from the entrance aperture that would otherwise pass through the exposure aperture of the enclosure and overwhelm the camera in the fluorescence excitation mode” and claim 18, “wherein the second optical pathway comprises one or more optical elements mechanically coupled to the movable arm and arranged to receive light entering from the entrance aperture and redirect the light entering from the entrance aperture to obliquely illuminate the sample to provide fluorescence illumination of the sample when the moveable arm is in the second position”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOGESH K AGGARWAL whose telephone number is (571)272-7360. The examiner can normally be reached Monday - Friday 9:30-6.
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/YOGESH K AGGARWAL/Primary Examiner, Art Unit 2637
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