DETAILED ACTION
This office action is in response to an application filed 10/17/2024, wherein claims 1-18 are pending and being examined. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statements (IDS) were submitted on 1/15/2025, 5/13/2025, and 8/19/2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 1-18 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.
In regard to claim 1, line 13 recites “wherein an illumination resolution of the system is about 250 nanometers or greater”. The term “about” is a relative term. Specifically, the term “about” is not defined by the claim, and the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore the metes and bounds of the claim cannot be readily determined, rendering it indefinite.
In regard to claims 2-18, these claims are rejected as being dependent upon a previously rejected 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.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,265,449 in view of Kato et al. (US 2013/0250391) (hereinafter Kato).
In regard to claim 1, the limitations within claim 1 of the instant application are rendered obvious and/or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 11,265,449 and/or one or more dependent claims stemming therefrom. However, claim 1 of U.S. Patent No. 11,265,449 does not explicitly disclose a laser light source specifically. Prior art Kato discloses,
an illuminating assembly comprising a laser light source [¶0014; irradiate, with the stimulation optical system, the specimen with the laser beam having an irradiation pattern that substantially matches a desired radiation pattern set by the position setting unit, e.g., a desired pattern inputted by a user. ¶0052-¶0055; change the intensity distribution of the stimulation beam on the specimen S and irradiate the specimen S with a stimulation beam having a desired three-dimensional pattern… simultaneously radiate stimulation beams into multiple points on the specimen S located three-dimensionally in the X, Y, and Z directions… laser light source 13].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine claim 1 of U.S. Patent No. 11,265,449 with the laser light source disclosed by Kato in order to enable a plurality of stimulation sites in a specimen to be easily set and stimulated with light [Kato ¶0007-¶0012, ¶0039]. As disclosed by Kato, laser beam light sources are suitable for accurately imaging and stimulating samples. The examiner also take official notice that “an illumination resolution of the system is about 250 nanometers or greater” is a range of operation unquestionably well-known in the field of sample imaging and illumination. That is, a person of ordinary skill in the art would readily appreciate that illumination resolutions of “250 nanometers or greater”, as claimed, is merely claiming a well-known and commonly used operation parameter for the field of microscopic imaging. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine claim 1 of U.S. Patent No. 11,265,449 with the well-known illumination resolution of “250 nanometers or greater” in order to enable high resolution imaging of microscopic samples. Higher imaging resolutions are commonly used in the art to produce more detailed reflections that are subsequently imaged by an imager.
In regard to claims 2-18, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 11,265,449.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,789,251 in view of Kato (US 2013/0250391).
In regard to claim 1, the limitations within claim 1 of the instant application are rendered obvious and/or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 11,789,251 and/or one or more dependent claims stemming therefrom. However, claim 1 of U.S. Patent No. 11,789,251 does not explicitly disclose a laser light source specifically. Prior art Kato discloses,
an illuminating assembly comprising a laser light source [¶0014; irradiate, with the stimulation optical system, the specimen with the laser beam having an irradiation pattern that substantially matches a desired radiation pattern set by the position setting unit, e.g., a desired pattern inputted by a user. ¶0052-¶0055; change the intensity distribution of the stimulation beam on the specimen S and irradiate the specimen S with a stimulation beam having a desired three-dimensional pattern… simultaneously radiate stimulation beams into multiple points on the specimen S located three-dimensionally in the X, Y, and Z directions… laser light source 13].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine claim 1 of U.S. Patent No. 11,789,251 with the laser light source disclosed by Kato in order to enable a plurality of stimulation sites in a specimen to be easily set and stimulated with light [Kato ¶0007-¶0012, ¶0039]. As disclosed by Kato, laser light sources are suitable for accurately imaging and stimulating samples. The examiner also take official notice that “an illumination resolution of the system is about 250 nanometers or greater” is a range of operation unquestionably well-known in the field of sample imaging and illumination. That is, a person of ordinary skill in the art would readily appreciate that illumination resolutions of “250 nanometers or greater”, as claimed, is merely claiming a well-known and commonly used operation parameter for the field of microscopic imaging. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine claim 1 of U.S. Patent No. 11,789,251 with the well-known illumination resolution of “250 nanometers or greater” in order to enable high resolution imaging of microscopic samples. Higher imaging resolutions are commonly used in the art to produce more detailed reflections that are subsequently imaged by an imager.
In regard to claims 2-18, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 11,789,251.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,366,742 in view of Kato US 2013/0250391).
In regard to claim 1, the limitations within claim 1 of the instant application are rendered obvious and/or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 12,366,742 and/or one or more dependent claims stemming therefrom. However, claim 1 of U.S. Patent No. 12,366,742 does not explicitly disclose a laser light source specifically. Prior art Kato discloses,
an illuminating assembly comprising a laser light source [¶0014; irradiate, with the stimulation optical system, the specimen with the laser beam having an irradiation pattern that substantially matches a desired radiation pattern set by the position setting unit, e.g., a desired pattern inputted by a user. ¶0052-¶0055; change the intensity distribution of the stimulation beam on the specimen S and irradiate the specimen S with a stimulation beam having a desired three-dimensional pattern… simultaneously radiate stimulation beams into multiple points on the specimen S located three-dimensionally in the X, Y, and Z directions… laser light source 13].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine claim 1 of U.S. Patent No. 12,366,742 with the laser light source disclosed by Kato in order to enable a plurality of stimulation sites in a specimen to be easily set and stimulated with light [Kato ¶0007-¶0012, ¶0039]. As disclosed by Kato, laser light sources are suitable for accurately imaging and stimulating samples. The examiner also take official notice that “an illumination resolution of the system is about 250 nanometers or greater” is a range of operation unquestionably well-known in the field of sample imaging and illumination. That is, a person of ordinary skill in the art would readily appreciate that illumination resolutions of “250 nanometers or greater”, as claimed, is merely claiming a well-known and commonly used operation parameter for the field of microscopic imaging. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine claim 1 of U.S. Patent No. 12,366,742 with the well-known illumination resolution of “250 nanometers or greater” in order to enable high resolution imaging of microscopic samples. Higher imaging resolutions are commonly used in the art to produce more detailed reflections that are subsequently imaged by an imager.
In regard to claims 2-18, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 12,366,742.
Allowable Subject Matter
Claims 1-18 would be allowable if terminal disclaimer(s) are filed to overcome the double patenting rejection noted herein and the indefiniteness issue is addressed via the next amendment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA A VOLENTINE whose telephone number is (571)270-7261. The examiner can normally be reached Monday-Friday 9am - 5pm.
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, Joe Ustaris can be reached at (571)272-7383. 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.
/REBECCA A VOLENTINE/Primary Examiner, Art Unit 2483 November 1, 2025