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 .
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 10/31/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-20 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 § 102
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.
Claims 1-4, 9, 16-17 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (herein after will be referred to as Li) (US Patent No. 9,823,457).
Regarding claim 1, Li discloses an imaging system comprising:
a planar mirror having a plurality of portions; [See Li [Fig. 8] M1.]
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 planar mirror to yield a plurality of reflections with different axial foci. [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.]
Regarding claim 2, Li discloses the system of claim 1. Furthermore, Li discloses
wherein, the plurality of portions of the planar mirror include a first portion and a second portion, 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.]
Regarding claim 3, Li discloses the system of claim 2. Furthermore, Li discloses
wherein, the first portion of the planar mirror reflects the beam of light at a different distance than 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.]
Regarding claim 4, Li discloses the system of claim 2. Furthermore, Li discloses
wherein, the first portion and the second portion are planar. [See Li [Col. 9 lines 9-16] permit imaging of different axial planes of the sample by rotating the mirror about the optical axis.]
Regarding claim 9, Li discloses 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 discloses 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 discloses 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 Dohi (US 20200379231).
Regarding claim 5, Li discloses the system of claim 2. Furthermore, Li does not explicitly disclose
wherein, the planar 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, Dohi does disclose
wherein, the planar 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. [See Dohi [Fig. 13] First mirror (7) and second scanning mirror (132). Also, see Fig. 8, mirror after objective is planar.]
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 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 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). Also, see Fig. 8, mirror after objective is planar.]
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 Fiolka et al. (herein after will be referred to as Fiolka) (US 20180292321).
Regarding claim 7, Li discloses the system of claim 1. Furthermore, Li does not explicitly disclose
further comprising: a remote focusing arm including the planar mirror.
However, Fiolka does disclose
further comprising: a remote focusing arm including the planar mirror. [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 to add the teachings of Fiolka, in order to improve upon imaging by incorporation of remote focusing.
Regarding claim 11, Li discloses 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 mirror having at least a first portion and a second portion; 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 planar mirror to yield a plurality of reflections with different axial foci. [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
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 to add the teachings of Fiolka, in order to improve upon imaging by incorporation of remote focusing.
Regarding claim 13, Li (modified by Fiolka) disclose the system of claim 12. Furthermore, Li discloses
wherein, the first portion of the mirror and the second portion of the mirror are planar. [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.]
Regarding claim 14, Li (modified by 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 discloses the system of claim 16. Furthermore, Li does not explicitly disclose
wherein, the planar mirror is a first mirror, and the beam of light is transmitted through the objective to the plurality of portions of the planar mirror by scanning the first mirror with a second mirror while the first mirror remains stationary.
However, Fiolka does disclose
wherein, the planar mirror is a first mirror, and the beam of light is transmitted through the objective to the plurality of portions of the planar mirror by scanning the first mirror with a second mirror while the first mirror remains stationary. [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 Oshiro et al. (herein after will be referred to as Oshiro) (US 20050258335).
Regarding claim 10, Li discloses 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 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 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 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 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
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/JAMES T BOYLAN/Examiner, Art Unit 2486