DETAILED ACTION
Response to Arguments
Applicant requests that the double patenting rejection be held in abeyance until further prosecution {See Remarks Pg. 7}.
Applicant’s arguments with respect to claims 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,158,571. Although the claims at issue are not identical, they are not patentably distinct from each other because this instant application contains broader claim language than the issued patent above.
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.
Claims 1-4, 9, 16-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US Patent No. 9,823,457) in view of Seitz et al. (herein after will be referred to as Seitz) (US Patent No. 6,268,921).
Regarding claim 1, Li discloses an imaging system comprising:
an objective shifted off an optical axis and having a tilted focus incident normal to the [See Li [Fig. 8] L3.]
a light source configured to generate and transmit a beam of light through the objective and to the plurality of portions of the [See Li [Fig. 1] Illumination source (150). Also, see [Col. 9 lines 9-16], permit imaging of different axial planes of the sample by rotating the mirror about the optical axis.]
Li does not explicitly disclose
a stepped mirror having a plurality of portions defined by a plurality of steps;
However, Seitz does disclose
a stepped mirror having a plurality of portions defined by a plurality of steps; [See Seitz [Fig. 3] Staircase mirror for an imaging/illumination system.]
It would have been obvious to the person of ordinary skill in the art at the time of the effective filing date to modify the system by Li to add the teachings of Seitz, in order to perform a simple substitution of mirrors. Also, see Seitz [Col. 1 line 65 to Col 2 line 9], improving upon scanning based measurement process by not moving a mirror using mechanical elements and can result in vibrations and drop in performance over time.
Regarding claim 2, Li (modified by Seitz) disclose the system of claim 1. Furthermore, Li discloses
the first portion being configured to generate a first reflection having a different axial focus than a second reflection generated by the second portion. [See Li [Col. 9 lines 9-16] permit imaging of different axial planes of the sample by rotating the mirror about the optical axis.]
Li does not explicitly disclose
wherein, the plurality of portions of the stepped mirror include a first portion and a second portion,
However, Seitz does disclose
wherein, the plurality of portions of the stepped mirror include a first portion and a second portion, [See Seitz [Fig. 3] Staircase mirror for an imaging/illumination system.]
Applying the same motivation as applied in claim 1.
Regarding claim 3, Li (modified by Seitz) disclose the system of claim 2. Furthermore, Li does not explicitly disclose
wherein, the first portion of the stepped mirror reflects the beam of light at a different distance than the second portion.
However, Seitz does disclose
wherein, the first portion of the stepped mirror reflects the beam of light at a different distance than the second portion. [See Seitz [Fig. 3] Staircase mirror for an imaging/illumination system.]
Applying the same motivation as applied in claim 1.
Regarding claim 4, Li (modified by Seitz) disclose the system of claim 2. Furthermore, Li does not explicitly disclose
wherein, the first portion is a first step of the plurality of steps and the second portion is a second step of the plurality of steps.
However, Seitz does disclose
wherein, the first portion is a first step of the plurality of steps and the second portion is a second step of the plurality of steps. [See Seitz [Fig. 3] Staircase mirror for an imaging/illumination system.]
Applying the same motivation as applied in claim 1.
Regarding claim 9, Li (modified by Seitz) disclose the system of claim 1. Furthermore, Li discloses
further comprising: at least one device configured to capture one or more images of a sample use the plurality of reflections. [See Li [Fig. 8] Imaging plane.]
Regarding claim 16, see examiners rejection for claim 1 which is analogous and applicable for the rejection of claim 16.
Regarding claim 17, see examiners rejection for claim 2 which is analogous and applicable for the rejection of claim 17.
Regarding claim 19, Li (modified by Seitz) disclose the method of claim 16. Furthermore, Li discloses
further comprising: capturing, via the plurality of reflections received at one or more cameras, image data of a sample. [See Li [Fig. 8] Imaging plane.]
Regarding claim 20, Li (modified by Seitz) disclose the method of claim 19. Furthermore, Li discloses
further comprising: generating a three-dimensional image of the sample via a computing device operable to receive the image data from the one or more cameras. [See Li [Col. 5 line 7] 3D imaging.]
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.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US Patent No. 9,823,457) in view of Seitz (US Patent No. 6,268,921) and in further view of Dohi (US 20200379231).
Regarding claim 5, Li (modified by Seitz) disclose the system of claim 2. Furthermore, Li does not explicitly disclose
wherein, the stepped mirror is a first mirror, and the imaging system includes a second mirror configured to scan the beam of light across the first portion and the second portion.
However, Seitz does disclose
wherein, the stepped mirror is a first mirror, and [See Seitz [Fig. 3] Staircase mirror for an imaging/illumination system.]
It would have been obvious to the person of ordinary skill in the art at the time of the effective filing date to modify the system by Li to add the teachings of Seitz, in order to perform a simple substitution of mirrors. Also, see Seitz [Col. 1 line 65 to Col 2 line 9], improving upon scanning based measurement process by not moving a mirror using mechanical elements and can result in vibrations and drop in performance over time.
Li (modified by Seitz) do not explicitly disclose
the imaging system includes a second mirror configured to scan the beam of light across the first portion and the second portion.
However, Dohi does disclose
the imaging system includes a second mirror configured to scan the beam of light across the first portion and the second portion. [See Dohi [Fig. 13] First mirror (7) and second scanning mirror (132).]
It would have been obvious to the person of ordinary skill in the art at the time of the effective filing date to modify the system by Li (modified by Seitz) to add the teachings of Dohi, in order to incorporate obvious optics in an imaging system. This will provide improvements such as a compact imaging system by utilizing mirrors to re-direct the light rays.
Regarding claim 6, Li (modified by Seitz and Dohi) disclose the system of claim 5. Furthermore, Li does not explicitly disclose
wherein, the first mirror remains stationary as the second mirror scans the beam of light across the first mirror.
However, Dohi does disclose
wherein, the first mirror remains stationary as the second mirror scans the beam of light across the first mirror. [See Dohi [Fig. 13] First mirror (7) and second scanning mirror (132).]
Applying the same motivation as applied in claim 5.
Claims 7, 11-14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US Patent No. 9,823,457) in view of Seitz (US Patent No. 6,268,921) and in further view of Fiolka et al. (herein after will be referred to as Fiolka) (US 20180292321).
Regarding claim 7, Li (modified by Seitz) disclose the system of claim 1. Furthermore, Li does not explicitly disclose
further comprising: a remote focusing arm including the stepped mirror.
However, Seitz does disclose
[See Seitz [Fig. 3] Staircase mirror for an imaging/illumination system.]
It would have been obvious to the person of ordinary skill in the art at the time of the effective filing date to modify the system by Li to add the teachings of Seitz, in order to perform a simple substitution of mirrors. Also, see Seitz [Col. 1 line 65 to Col 2 line 9], improving upon scanning based measurement process by not moving a mirror using mechanical elements and can result in vibrations and drop in performance over time.
Li (modified by Seitz) do not explicitly disclose
further comprising: a remote focusing arm including the
However, Fiolka does disclose
further comprising: a remote focusing arm including the [See Fiolka [Fig. 12] Remote focusing objective (1214) and mirror (1236).]
It would have been obvious to the person of ordinary skill in the art at the time of the effective filing date to modify the system by Li (modified by Seitz) to add the teachings of Fiolka, in order to improve upon imaging by incorporation of remote focusing.
Regarding claim 11, Li (modified by Seitz) disclose the system of claim 1. Furthermore, Li does not explicitly disclose
wherein, the objective is a first objective, and the imaging system includes a second objective configured to receive the plurality of reflections and illuminate a sample using the plurality of reflections.
However, Fiolka does disclose
wherein, the objective is a first objective, and the imaging system includes a second objective configured to receive the plurality of reflections and illuminate a sample using the plurality of reflections. [See Fiolka [Fig. 12 and 0106]]
Applying the same motivation as applied in claim 7.
Regarding claim 12, Li discloses an imaging system comprising:
a first objective shifted off an optical axis and having a tilted focus incident normal to the mirror; and a light source configured to generate and transmit a beam of light through the first objective and to the first portion and the second portion of the mirror to yield a plurality of reflections with different axial foci, [See Li [Fig. 8]
an objective shifted off an optical axis and having a tilted focus incident normal to the planar mirror; and [See Li [Fig. 8] L3.]
a light source configured to generate and transmit a beam of light through the objective and to the plurality of portions of the [See Li [Fig. 1] Illumination source (150). Also, see [Col. 9 lines 9-16], permit imaging of different axial planes of the sample by rotating the mirror about the optical axis.]
Li does not explicitly disclose
a stepped mirror having at least a first portion including a first step and a second portion including a second step;
the plurality of reflections being directed to a second objective to illuminate a sample.
However, Seitz does disclose
a stepped mirror having at least a first portion including a first step and a second portion including a second step; [See Seitz [Fig. 3] Staircase mirror for an imaging/illumination system.]
It would have been obvious to the person of ordinary skill in the art at the time of the effective filing date to modify the system by Li to add the teachings of Seitz, in order to perform a simple substitution of mirrors. Also, see Seitz [Col. 1 line 65 to Col 2 line 9], improving upon scanning based measurement process by not moving a mirror using mechanical elements and can result in vibrations and drop in performance over time.
Li (modified by Seitz) do not explicitly disclose
the plurality of reflections being directed to a second objective to illuminate a sample.
However, Fiolka does disclose
the plurality of reflections being directed to a second objective to illuminate a sample. [See Fiolka [Fig. 12 and 0106]
It would have been obvious to the person of ordinary skill in the art at the time of the effective filing date to modify the system by Li (modified by Seitz) to add the teachings of Fiolka, in order to improve upon imaging by incorporation of remote focusing.
Regarding claim 14, Li (modified by Seitz and Fiolka) disclose the system of claim 11. Furthermore, Li discloses
further comprising: a camera configured to capture one or more images of the sample. [See Li [Fig. 8] Imaging plane.]
Regarding claim 18, Li (modified by Seitz) disclose the system of claim 16. Furthermore, Li does not explicitly disclose
wherein, the stepped mirror is a first mirror, and the beam of light is transmitted through the objective to the plurality of portions of the stepped mirror by scanning the first mirror with a second mirror while the first mirror remains stationary.
However, Seitz does disclose
wherein, the stepped mirror is a first mirror, and [See Seitz [Fig. 3] Staircase mirror for an imaging/illumination system.]
Applying the same motivation as applied in claim 7.
Li (modified by Seitz) do not explicitly disclose
the beam of light is transmitted through the objective to the plurality of portions of the
However, Fiolka does disclose
the beam of light is transmitted through the objective to the plurality of portions of the [See Fiolka [Fig. 13] Scanning mirror (143). Also, see Fig. 8, planar mirror (7).]
Applying the same motivation as applied in claim 7.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Li (US Patent No. 9,823,457) in view of Seitz (US Patent No. 6,268,921) and in further view of Oshiro et al. (herein after will be referred to as Oshiro) (US 20050258335).
Regarding claim 10, Li (modified by Seitz) disclose the system of claim 1. Furthermore, Li does not explicitly disclose
further comprising: at least one device configured to measure a focus corresponding to a reflection of the plurality of reflections.
However, Oshiro does disclose
further comprising: at least one device configured to measure a focus corresponding to a reflection of the plurality of reflections. [See Oshiro [Fig. 1] Focus sensor (32) to measure focus using reflected light.]
It would have been obvious to the person of ordinary skill in the art at the time of the effective filing date to modify the system by Li (modified by Seitz) to add the teachings of Oshiro, in order to utilize a separate camera for focus control such that image acquisition is performed simultaneously with focus control [See Oshiro [0006]].
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Li (US Patent No. 9,823,457) in view of Seitz (US Patent No. 6,268,921) in view of Fiolka (US 20180292321) and in further view of Piestun et al. (herein after will be referred to as Piestun) (US 20160048963).
Regarding claim 15, Li (modified by Seitz and Fiolka) disclose the system of claim 14. Furthermore, Li does not explicitly disclose
wherein, the camera is a first camera, and the imaging system includes a second camera configured to measure one or more point spread functions corresponding to the plurality of reflections.
However, Piestun does disclose
wherein, the camera is a first camera, and the imaging system includes a second camera configured to measure one or more point spread functions corresponding to the plurality of reflections. [See Piestun [Claim 2] Using a second imaging system to estimate PSF.]
It would have been obvious to the person of ordinary skill in the art at the time of the effective filing date to modify the system by Li (modified by Seitz and Fiolka) to add the teachings of Piestun, in order to incorporate obvious image processing techniques such as a PSF. PSF provides various benefits such as improved image quality, optimization, error correction, etc.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES T BOYLAN whose telephone number is (571)272-8242. The examiner can normally be reached Monday-Friday 7am-3pm.
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/JAMES T BOYLAN/Examiner, Art Unit 2486
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