DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
1- This office action is a response to an application filed on 11/06/2024, in which claims 2 and 4-22 are currently pending. The Application is a Continuation of 18480803 , filed 10/04/2023, now abandoned. 18480803 is a Continuation of 17247777 , filed 12/22/2020, now U.S. Patent # 11815458. 17247777 Claims Priority from Provisional Application 62956083 , filed 12/31/2019 and from Provisional Application 62959681 , filed 01/10/2020.
Information Disclosure Statement
2- The submitted information disclosure statement(s) (IDS) is(are) in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is(are) being considered by the examiner.
Specification
3- The specification has not been checked to the extent necessary to determine the presence of all possible minor errors, even though many typos were encountered. Applicant’s cooperation is requested in correcting any errors of which application may become aware in the specification.
Drawings
4- The drawings were received on 12/31/2018. These drawings are acceptable.
Claim Interpretation - 35 USC § 112
5- The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
6- This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Autofocus module in claim 7,
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
7- 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.
8- Claim 10 is 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 pre-AIA the applicant regards as the invention.
As to claim 10, which reads “ … a second filter that allows at least one of i) excitation light or ii) the first autofocus light and the second autofocus light to be added”, the underlined clauses appear to present indefiniteness issues as it is not clear where the lights are to be added. Are they added to the light paths for detection or to another component?
For examination purposes, all the options will be considered.
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Annotated Fig. 1
Claim Rejections - 35 USC § 102
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 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 (MPEP 706.02(m)).
9- 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.
10- Claims 2, 4-22 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Segale al. (PGPUB No. 2010/0157086).
As to claim 2, Segale teaches a system, and its method of use (Abstract and Figs. 1-15) comprising: a substrate to include a sample (flow cell 14, 118/120, 400 or 606/608); a lens (40 or 620 and the like ), wherein at least first light and second light from the sample are focused by the lens (Fig. 1; lens 40 for ex. focuses light propagating to detector 48 and that to detector 50); a first filter ( dichroic filter 34) to receive the first light and the second light focused by the lens (Fig. 1), the first filter having a first surface reflecting the first light (towards 48) and transmitting the second light (towards 52 then 50); a reflective component (52) positioned on an opposite side of the first filter from the lens, the reflective component having a second surface reflecting the second light that was transmitted by the first filter, the second surface forming an acute angle with the first surface (see annotated Fig. 1); and a sensor (48/50) to receive the first light reflected by the first filter, and the second light reflected by the reflective component (Fig. 1).
(claims 4, 17) wherein at least one of the first light or the second light is emission light from the sample, the emission light generated by subjecting the sample to excitation light (Fig. 1, ¶ 34-35, 41-43 for ex).
(claims 5, 18) further comprising a light source (26/28/42 and 30, and equivalents in the other embodiments) that generates the excitation light (Fig. 1 and ¶ 34, 41-43 for ex).
(claims 6-7, 19) further comprising an autofocus module, wherein the first light comprises first autofocus light, and wherein the second light comprises second autofocus light; (claim 7) wherein the autofocus module is configured to steer the first autofocus light and the second autofocus light independently of a position of emission light on the sensor (Abstract, ¶ 2, 10-17 for ex.; dynamic autofocus is used).
(claims 8, 20) wherein the substrate includes a first surface and a second surface, wherein the first autofocus light is reflected at the first surface, and wherein the second autofocus light is reflected at the second surface (flow cell 14, or 400 for ex. present multiple surfaces which reflect the excitation and the emission lights internally, which will be autofocused by the lens).
(claim 9) further comprising a fluorescence collection optics system, wherein the lens, the first filter, the reflective component and the sensor are shared components of the autofocus module and the fluorescence collection optics system (¶ 34, 41-43, 48, 51-53, 59 for ex.)
(claim 10) further comprising a second filter that allows at least one of i) excitation light or ii) the first autofocus light and the second autofocus light to be added (the base under 14 or surface 32, allows excitation light from 42 or 30 to be added toward sample 14, while being filtered by the inherent transmissivity of the components).
(claims 11, 21) further comprising a lateral displacement prism, wherein the lateral displacement prism causes the first light and the second light to diverge at a predetermined angle from each other (beam splitter 34, which is used as a prism 622 in Fig. 15, splits the two lights to diverge them at substantially perpendicular directions).
(claim 12) wherein the lens comprises at least one of i) an objective or ii) a tube lens assigned to a detector channel of the system (¶ 5, 52, 98 for ex.)
(claims 13, 22) wherein the lens comprises at least the tube lens assigned to the detector channel of the system (See the rejection of claim 12), the system further comprising a second filter facilitating that the first light and the second light are conveyed in the detector channel (see the rejection of claim 10).
(claim 14) wherein the lens comprises at least the objective (see rejection of claim 12), the system further comprising a structure positioned between the substrate and the objective to block at least one beam from reaching the objective (the body of objective 40 acts as a spatial filter allowing some light and blocking transversal light from propagating towards detectors 48/50).
(claim 15) further comprising a second filter (112 and/or 114) positioned between the sensor and each of the first filter and the reflective component, the second filter to perform light conditioning in preparation for detection (Fig. 2).
Conclusion
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED K AMARA whose telephone number is (571)272-7847. The examiner can normally be reached on Monday-Friday: 9:00-17:00
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached on (571-272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohamed K AMARA/
Primary Examiner, Art Unit 2877
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