Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Amendment
The amendment filed on 04/09/2026 has been entered into this application.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-30 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Oostman, JR. et al. (2003/0048539 A1, previously cited reference) in view of Sorin et al. (WO2013032474, using Published asUS2014/0219606 A1, previously cited reference) and/or He et al. (7,212,343 B1, previously cited reference).
Regarding claim 1, Oostman discloses a flow cytometer included in analytical instruments for light analysis (figs. 1-15) comprising:
a flow cell flow cell 41/flow stream 78/103/flow channel 109 configured to permit liquid to flow through the flow cell;
one or more lasers laser 11/ lasers 52 and 54, each of the laser(s) configured to project light into the flow cell, as can be seen in depicted drawing (i.e. figs. 1, 3 and 4); and
a plurality of wavelength division multiplexers (WDMs) is/are plurality of dichroic mirror and/or combination of dichroic mirrors 25-44, wherein each of the WDMs is configured to receive a portion of light (28) from the flow cell and comprises:
each of the combination of dichroic mirrors 25-44 make-up a plurality of filters (dichroic mirror(s) is also an optical filter that reflects some wavelengths (colors) of light and transmits others), inherently wherein each of the filters is configured to receive light such that: a portion of light passes through the filter; and another portion of light is reflected by the filter [pars. 0029-33] (Oostman, claims 1-2 and 8);
Oostman discloses a plurality of photodetector(s) a respective detector cluster 124, 126, 128 and 130 which houses an array of detectors) is configured to receive light that passed through a filter of the plurality of filters that make-up dichroic mirror(s) integrated as a single unit [pars. 0029-33] (Oostman, claims 1-2 and 8).
Oostman fail to explicitly specify the type of the photodetector as being avalanche photodiodes (APDs), wherein each of the APDs is configured to receive light that passed through a filter of the plurality of filters.
However, even though Oostman fail to disclose the type of photodetector used in the system as being avalanche photodiodes (APDs), since he does not limit the photodetector to be used, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to choose any suitable photodetector for the intended application, since avalanche photodiodes (APDs) is photodetector, and the propose modification of the prior art would not change the principle of operation of the prior art invention being modified.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adapt the recited type of photodetector in view of the feature is merely a variation in design and the results would have been predictable. Further, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to choose any suitable photodetector for the intended application, such as, in the manner set forth in applicant's claim(s), since avalanche photodiodes (APDs) is a photodetector, and it has been held that the provision of adjustability, where needed, involves only routine skill in the art, In re Stevens, 101 USPQ 284 (CC1954).
Furthermore, Oostman fail to explicitly specify the bending mirror(s) constructional/structural change(s) is/are included in the multiplexer(s) (WDMs), such as, one or more mirrors, wherein: each of the one or more mirrors comprises at least one reflective surface; at least one of the reflective surface(s) of the one or more mirrors is concave; and the reflective surface(s) of the one or more mirrors are configured to: receive light reflected by a filter of the plurality of filters; and reflect light to another filter of the plurality of filters.
Sorin and/or He from the same field of endeavor teaches of constructional/structural changes such as claimed by Applicant’s claim(s) 1 is known in the art in order to recollimated the beam as travels through the splitter(s)/filter(s) and/or in order to compensate the filter tilting errors and in order to minimize errors and corrected immediately tilting errors. Sorin teaches of a WDM demultiplexer, and/or partially reflective, comprises/comprising collimating mirrors 448 are curved reflecting mirrors (i.e. concave) to re-collimate the beam as travels through the splitter 430. The collimating mirrors 448 may compensate for beam divergence, e.g., caused by diffraction Sorin (Sorin, [par. 0043] (fig. 4)) and/or He teaches of compact multiplexer WDM comprises/comprising a/one concave mirror 316 that reflects the beam to the next filter for further demultiplexing till all remaining wavelengths are respectively coupled out, the concave mirror 316 is to compensate the tilting error propagation commonly seen in the prior art modules, for example, in FIG. 3 and 7 (fig. 7: 702) He, (He, col. 5, lines 2-24; and lines 62-col. 6, lines 7) in order to compensate the filter tilting errors and in order to minimize errors and corrected immediately tilting errors, in other words, positional and angular errors generated by any prior filter tilting are completely compensated for all following channels through the oblate spheroid concave mirror array, as per teachings of He.
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify Oostman with the constructional/structural change(s) above, in the manner set forth in applicant's claim 1, in view of the teaching(s) of Sorin and/or He in order to re-collimate the beam as travels through the splitter/filter as the concave mirror(s) compensate for beam divergence, e.g., caused by diffraction, as per teachings of Sorin and/or in order to compensate the filter tilting errors and in order to minimize errors and corrected immediately the tilting errors, in other words, positional and angular errors generated by any prior filter tilting are completely compensated for all following channels through the oblate spheroid concave mirror array, as per teachings of He.
As to claims 2-5, Oostman when modified by Sorin and/or He, the combination also discloses a structure that is use in a flow cytometer/system comprising plurality dichroic mirrors 25-44 [pars. 0029-33] (Oostman, claims 1-2 and 8), dichroic mirror(s) that part of inherent function is beam splitting and is an optical filter that reflects some wavelengths (colors) of light and transmits others, the system is/are implementing limitations such as; wherein the one or more mirrors comprise a plurality of reflective surfaces (claim 2); wherein more than one of the plurality of reflective surfaces is concave curved reflecting mirrors (Sorin, (fig. 4:448) [par. 0043]) and/or (He, fig. 3 and 7: 316 and 702))(claim 3); wherein each of the WDMs is configured such that a portion of a light path between the plurality of reflective surfaces of the one or more mirrors and the plurality of filters forms a zig-zag pattern, as can be seen in depicted drawing (figs. 5-6) [pars. 0031-33] (claim 4); and
plurality dichroic mirrors 25-44 [pars. 0029-33] (Oostman, claims 1-2 and 8), dichroic mirror(s) that part of inherent function is beam splitting and is an optical filter that reflects some wavelengths (colors) of light and transmits others a splitter, wherein: the plurality of WDMs the plurality dichroic mirrors include a first WDM and a second WDM; and the splitter is configured to: perform inherent function of receive light from the flow cell; direct a first portion of the light received from the flow cell to the first WDM within the plurality dichroic mirrors 25-44; and direct a second portion of the light received from the flow cell to the second WDM within the plurality dichroic mirrors 25-44 (claim 5).
As to claims 6-14, Oostman when modified by Sorin and/or He, the combination also discloses a structure that is use in a flow cytometer/system comprising plurality dichroic mirrors 25-44 [pars. 0029-33] (Oostman, claims 1-2 and 8), dichroic mirror(s) that part of inherent function is beam splitting and is an optical filter that reflects some wavelengths (colors) of light and transmits others, configured to operate in a wavelength range at least from 400 mm to 700 mm (the entire visible light range) [par. 0042] and further comprise a plurality of focusing lenses, wherein each of the focusing lenses is configured to focus light that passed through a filter of the plurality of filters to a spot [pars. 0040, 0043, (claim 16)], as applied to claim 1.
Oostman fail to explicitly specify the constructional/structural changes of; the one or more mirrors comprise at least five reflective surfaces; and the plurality of filters comprises at least six filters (claim 6); wherein the plurality of WDMs comprise at least 24 APDs (claim 7); wherein the plurality of WDMs comprise at least 48 APDs (claim 8); wherein the plurality of WDMs comprise at least 64 APDs (claim 9); wherein at least one WDM of the plurality of WDMs is configured to detect a substantially full spectrum of visible light (claim 10); wherein the plurality of WDMs are collectively configured to detect a substantially full spectrum of visible light (claim 11); wherein at least one WDM of the plurality of WDMs is configured to detect substantially every wavelength of light between 380 nm and 780 nm (claim 12); wherein the first WDM and the second WDM: each further comprise: an additional filter configured to receive light reflected by a filter of the plurality of filters such that a portion of light passes through the additional filter; and an additional APD configured to receive light that passed through the additional filter; and each are configured such that substantially all the light that the WDM is configured to receive is received by the plurality of APDs and the additional APD (claim 13); and wherein the first WDM and the second WDM each further comprise a plurality of focusing lenses, wherein each of the focusing lenses is configured to focus light that passed through a filter of the plurality of filters to a spot on an APD of the plurality of APDs, wherein the spot has a diameter that is less than 1 mm (claim 14).
However, even though, Oostman fail to teach the constructional changes in the system of the claim 1, as that claimed by Applicant’s claims 6-14, the constructional changes are considered obvious design variation, alternatives and/or duplication of parts that is within the ordinary skill of one in the art to choose any suitable combination(s) for the intended application.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adapt the recited constructional changes as desired appropriate, such as, in the manner set forth in applicant's claims 6-14, in view of the feature is merely a variation, alternatives and/or duplication of part(s) in design, and the results would have been predictable, since it has been held that the provision of adjustability, where needed, involves only routine skill in the art, In re Stevens, 101 USPQ 284 (CC1954), and it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
As to claims 15, Oostman when modified by Sorin and/or He, the combination also discloses a structure that is use in a flow cytometer/system comprising a light source laser 11/ lasers 52 and 54 arranged to illuminate a stream of particles 43/flow cell 78 in a viewing zone as can be seen in depicted drawing (i.e. figs. 1, 3 and 4), lasers configured to emit multiple wavelength [pars. 0002, 0009]
Oostman fail to explicitly specify the constructional/structural changes of the laser(s) being configured in certain way; such as, wherein at least one of the laser(s) is configured to emit ultraviolet light or violet light (claim 15); wherein the one or more lasers comprise a plurality of lasers, each of the lasers configured to emit a wavelength of light that is different than the wavelength of light that each other of the lasers is configured to emit (claim 16); wherein each of the lasers is configured to project light into the flow cell at a respective one of a plurality of spatially separated locations in the flow cell (claim 17); and comprising a set of one or more optical elements that are each configured to reflect light emitted by a respective one of the lasers toward the flow cell (claim 18).
However, even though Oostman fails to teach the exact configuration used in the system such as in the manner set forth in applicant's claims 15-18, the constructional/structural changes are considered obvious design variation, alternatives that is within the ordinary skill of one in the art to choose any suitable combination(s) for the intended application.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adapt the recited constructional changes as desired appropriate, such as, in the manner set forth in applicant's claims 15-18, in view of the feature is merely a variation, and alternatives in design, and the results would have been predictable, since it has been held that the provision of adjustability, where needed, involves only routine skill in the art, In re Stevens, 101 USPQ 284 (CC1954), and it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
As to claims 19-22, Oostman when modified by Sorin and/or He, the combination also discloses a structure that is use in a flow cytometer/system comprising fluorescent light stimulated by the different sources is imaged into a plurality of optical fibers [pars. 0009-11 and 0028-29], each lens 265 is movable for adjusting the focal spot [pars. 0033, 0037 and 0041], the system is/are implementing limitations such as;
a plurality of multimode optical fibers optical fibers 123, 125, 127 and 129 [par. 0028], wherein each of the multimode optical fibers is configured to: receive light from a respective one of the spatially separated locations in the flow cell; and direct the light received from a respective one of the spatially separated locations in the flow cell to one of the plurality of WDMs (claim 19);
wherein each of the WDMs plurality of dichroic mirror and/or combination of dichroic mirrors 25-44 further comprises a plurality of focusing lenses, wherein each of the focusing lenses is configured to focus light that passed through a filter of the plurality of the filters to a spot on photodetectors (i.e. an APD) of the plurality of APDs, the spot having a diameter that is less than 1 mm (claim 20); using a plurality of lasers of different colors (see abstract) [par. 0009] includes one of the lasers is configured to emit ultraviolet light; one of the lasers is configured to emit violet light; one of the lasers is configured to emit blue light; and/or one of the lasers is configured to emit yellow-green light (claim 21); and wherein: using a plurality of lasers of different colors (see abstract) [par. 0009] includes one of the lasers is configured to emit red light; one of the lasers is configured to emit blue light; and one of the lasers is configured to emit violet light (claim 22).
As to claims 23-30, Oostman when modified by Sorin and/or He, the combination also discloses a structure that is use in a flow cytometer/system comprising plurality dichroic mirrors 25-44 [pars. 0029-33] (Oostman, claims 1-2 and 8), dichroic mirror(s) that part of inherent function is beam splitting and is an optical filter that reflects some wavelengths (colors) of light and transmits others, configured to operate in a wavelength range at least from 400 mm to 700 mm (the entire visible light range) [par. 0042] and further comprise a plurality of focusing lenses, wherein each of the focusing lenses is configured to focus light that passed through a filter of the plurality of filters to a spot [pars. 0040, 0043, (claim 16)], fluorescent light stimulated by the different sources is imaged into a plurality of optical fibers [pars. 0009-11 and 0028-29], each lens 265 is movable for adjusting the focal spot [pars. 0033, 0037 and 0041], using a plurality of lasers of different colors (see abstract) [par. 0009], as applied to claim 1.
Oostman fail to explicitly specify the constructional/structural changes of; wherein the plurality of WDMs comprise at least 24 APDs (claim 23); wherein at least one of the lasers is configured to emit yellow-green light (claim 24); wherein the plurality of WDMs comprise at least 48 APDs (claim 25); wherein at least one of the lasers is configured to emit ultraviolet light (claim 26); wherein the plurality of WDMs comprise at least 64 APDs (claim 27); wherein at least one WDM of the plurality of WDMs is configured to detect a substantially full spectrum of visible light (claim 28); wherein: each of the WDMs further comprises: an additional filter configured to receive light reflected by a filter of the plurality of filters such that a portion of light passes through the additional filter; and an additional APD configured to receive light that passed through the additional filter; and each of the WDMs is configured such that substantially all the light that the WDM is configured to receive is received by the plurality of APDs and the additional APD (claim 29); and wherein for each of the first WDM and the second WDM: the WDM comprises a block comprising a first surface and each of the filters of the WDM is coupled to the first surface of the block; the one or more mirrors comprise at least five reflective surfaces; and the plurality of filters comprise at least six filters (claim 30).
However, even though, Oostman fail to teach the constructional changes in the system of the claim 1, as that claimed by Applicant’s claims 23-30, the constructional changes are considered obvious design variation, alternatives and/or duplication of parts that is within the ordinary skill of one in the art to choose any suitable combination(s) for the intended application.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adapt the recited constructional changes as desired appropriate, such as, in the manner set forth in applicant's claims 23-30, in view of the feature is merely a variation, alternatives and/or duplication of part(s) in design, and the results would have been predictable, since it has been held that the provision of adjustability, where needed, involves only routine skill in the art, In re Stevens, 101 USPQ 284 (CC1954), and it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Response to Arguments
Applicant’s arguments/remarks, see pages 2-15, filed on 04/09/2026, with respect to the rejection(s) of claim(s) have been fully considered but are not persuasive.
Applicant’s arguments:
a) Applicant argues beginning in page 2- 4 that “A. The References Do Not Teach or Suggest Avalanche Photodiodes (APDs) for Oostman's Flow Cytometer Independent claim 1 recites a flow cytometer comprising, in part, "a plurality of wavelength division multiplexers (WDMs)" that each comprise "a plurality of avalanche photodiodes (APDs), wherein each of the APDs is configured to receive light that passed through a filter of the plurality of filters."
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"Obviousness requires a suggestion of all limitations in a claim." Ex parte Ruchart, Appeal No. 2016-001415, slip op. at 4 (PTAB Mar. 25, 2024) (citing CFMT, Inc. V. Yieldup Int'l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)) (emphasis added). By its own admission, the Office has not established that Oostman would have suggested using APDs for its photodetectors because Oostman does not disclose APDs. Action at 4. Rather, Oostman consistently discloses using a "photo multiplier tube (PMT)" for each of its detectors. Oostman at 11 [0003]-[0004], FIG. 1; see also id. at " [0031], [0034], [0037] ("the detectors being photomultiplier tubes").………………………… ……………………………………………………………………………………………………………………. For example, the Office does not explain why a person of ordinary skill in the art ("POSITA") would have viewed Oostman's fluorescence detection as one of the "certain scientific applications" where losing the "excellent noise characteristics" of PMTs was acceptable. See Specification at 64:25-65:8, 69:9-17. To the contrary, evidence-of- record shows the use of APDs for only "certain color bands with known bright fluorescence," which is incongruent with Oostman's objective to use "a larger number of spectrally diverse detectors" to detect "a wide range of spectral responses." Id. at 69:9-17; Oostman at T [0009]; see also Oostman at 1 [0030]. The Office thus has not established that it would have been obvious to incorporate APDs into Oostman's instrument in the manner claimed.
For at least these reasons, independent claim 1 and its dependent claims are patentable over Oostman. Applicant respectfully requests reconsideration and withdrawal of the rejections.
Examiner's response:
With respect to argument (a), it is respectfully pointed out to applicant that this argument is not persuasive because it has been held that during examination See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) ("During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow."); and further, Applicant is reminded that, during examination, claim terms are given their broadest reasonable construction consistent with the Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). In this case, it is respectfully pointed out to applicant that by applicant's own account the rejection was made as 103 not 102 and the examiner did recognize that the limitation "a plurality of avalanche photodiodes (APDs), wherein each of the APDs is configured to receive light that passed through a filter of the plurality of filters." was not taught by Oostman but used obviousness and the combination of Sorin and/or He to find this limitation in view of Oostman teaching of employing optical detectors such as a high-speed detector [pars. 0082-83].
As such, one of ordinary skill before the effective filing date of the claimed invention and/or at the time the invention was made would have fairly and reasonably recognized that avalanche photodiodes (APDs) is/are known and recognized in the art as optical detector(s) for high-speed detection that is/are employed in system such as high-speed laser scanners, spectroscopy, laser microscopy and optical time-domain reflectometers (OTDR), radiation detection, and sensor systems as imaging receiver(s), and/or used for monitoring systems and analyzing polarization. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and/or at the time the invention was made to fairly and reasonably recognized that avalanche photodiodes (APDs) is/are known and recognized in the art as optical detector(s) for high-speed detection can be employed or used in the system such as in the improved system for detecting fluorescent light having multiple colors, high-speed laser scanners, spectroscopy, laser microscopy and optical time-domain reflectometers (OTDR), radiation detection, and sensor systems as imaging receiver(s), and/or for monitoring and analysis of the system(s) based on Oostman suggestion of using a high-speed optical detectors. It is respectfully pointed out to applicant that this argument is not persuasive, as the examiner did recognize that obviousness can only be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988) and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992).
Additionally, both the instant application claims and the cited primary reference Oostman is/are reasonably concern with monitoring and analyzing cytometer and/or multi-color flow cytometer considering the BRI, consistent with the instant specification. As such, it is respectfully pointed out to applicant that this argument is not persuasive because it has been held that a prior art reference must either be in the field of applicant's endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, since both the instant application claims and the cited primary reference(s) is/are reasonably concern with the flow cytometer which the applicant is involved, the cited reference(s) is/are considered as an analogous art. The rejections under 35 U.S.C. 103 is/are proper.
Furthermore, both the instant application claims (disclosure as published [par.0032] ) and the prior art cited references Oostman, Sorin and He are fairly and reasonably concern with using wavelength-division multiplexing (WDMs), (WDMs) a technology which multiplexes a number of optical carrier signals onto a single optical fiber by using different wavelengths (i.e., colors) of laser light or using multiple light wavelengths to send signal over the same medium is known in the art in order to monitoring and analyzing cytometer and/or multi-color flow cytometer considering the BRI, consistent with the instant specification. As such, the cited references are considered as an analogous art, and the reason to combine and the rejections is/are proper.
It is respectfully pointed out to applicant that these arguments are not persuasive because it is well settled that, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, since both the instant application claims (disclosure as published [par.0032]) and the prior art cited references Oostman, Sorin and He are fairly and reasonably concern with using wavelength-division multiplexing (WDMs), the cited references are considered as an analogous art, and the rejections under 35 U.S.C. 103 is/are proper. It is respectfully pointed out to applicant that this/these argument(s) is/are not persuasive because applicant has not provided any factual evidence that suggest or obviate the examiner's position would not have been obvious since the cited references are considered as an analogous art.
In addition, a dichroic or dichroic mirror considering the BRI, consistent with the instant specification (see [pars. 0032-33]) and with some reliance on the knowledge of one of ordinary skill at the time the invention was made in order to provide an enabling disclosure, In re BODE et al, 193 USPQ 12 at 16 (CCPA, 1977), - refers to any optical device which can split a beam of light into two beams with differing wavelengths. Such devices include mirrors and filters, usually treated with optical coatings, which are designed to reflect light over a certain range of wavelengths and transmit light which is outside that range. Each of the dichroic mirror(s) make-up of each of the dichroic mirror(s) is made up of plurality of filters (dichroic mirror(s) that include(s) optical filter that reflects some wavelengths (colors) of light and transmits others), obviously the makeup includes plurality of filters.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and/or at the time the invention was made would fairly and reasonably recognized that Oostman when modified with obviousness and the combination of the cited references above, one of ordinary skill in the art would fairly and reasonably recognize that each of the optical high-speed detection that avalanche photodiodes (APDs) is configured to receive light that passed through a filter of the plurality of filters. As such, it is respectfully pointed out to applicant that this argument(s) (a) is/are not persuasive because one of ordinary skill before the effective filing date of the claimed invention and/or at the time the invention was made would have fairly and reasonably recognized that the prior art does properly support a rejection of the claimed invention under 35 U.S.C. 103.
Applicant’s arguments:
b) Applicant argues beginning in page 5 - 14 that “B. Sorin and He Would Not Have Led a POSITA to the Claimed Arrangement of Mirror(s) and Filters In Oostman's Flow Cytometer Independent claim 1 also recites that each of the WDMs of the flow cytometer comprises
"a plurality of filters" and "one or more mirrors." Each of the filters is "configured to receive light such that[] a portion of light passes through the filter[] and another portion of light is reflected by the filter." The mirror(s) each comprise "at least one reflective surface" where "at least one of the reflective surface(s) of the one or more mirrors is concave" and "the reflective surface(s) are configured to[] receive light reflected by a filter of the plurality of filters[] and reflect light to another filter of the plurality of filters." ………………………………………………………………………….. …………………………….
Applicant argues that “1. A POSITA Would Not Have Turned to Sorin or He to Modify Oostman”
First, the Office, in evaluating obviousness, has not addressed "whether [a POSITA] would have plucked [Sorin and He] out of the sea of prior art and combined it with [Oostman]" to arrive at the claimed invention. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1337 (Fed. Cir. 2016).
In particular, neither Sorin nor He relates to Oostman's flow cytometer where the "optical instrument [is used] to stimulate scattering and fluorescence from fluorescent biological particulate matter." Oostman at Abstract. Rather, both Sorin and He relate to optical communications: ……………………………………………………………. ……………………………………
Applicant argues that, …………the Office "cannot say that [Sorin or He] 'fairly suggests' that [their] teachings should be combined with those of [Oostman], since [they] nowhere suggest how to apply [their] teachings to" flow cytometers, and the Office has not otherwise shown that a POSITA would have made that leap. In re Bell, 991 F.2d 781, 785 (Fed. Cir. 1993).
Applicant argues that…………. 2. The Office Has Not Shown That Oostman's Flow Cytometer Suffered From the Problems That Sorin and He Purportedly Address
Notwithstanding that a POSITA would not have turned to Sorin and/or He for the proposed modification of Oostman in the first place, the Office has not established that the purported benefits of their filter and mirror arrangements would have been applicable to Oostman.
Applicant argues that …… (1) The Office Has Not Shown Beam Divergence Was a Problem for Oostman's Flow Cytometer
……………………….., the Office has not shown that the beam in Oostman's flow cytometer would have required re-collimation.
……………, Oostman does not teach that its alleged filters-dichroic mirrors 25-44"- cause "beam divergen[ce], e.g., caused by diffraction" as "beam 28" travels through its alleged WDM or that any such beam divergence is problematic for its FIG. 1 flow cytometer. …………………………………………………………………………………. ………………………………..
Applicant argues that …., the alleged WDM in Oostman FIG. 1 and the alleged WDM in Sorin's FIG. 4 differ with respect to what portions of light their alleged filters-dichroic mirror 25-44" and "selective mirrors 450," respectively-allow to travel therethrough for wavelength division. Oostman at " [0003]-[0004], FIG. 1; Sorin at 1 [0043], FIG. 4. …………………………………………………………..
Applicant argues that …., unlike the arrangement in Oostman's FIG. 1, in Sorin's FIG. 4 it is the reflected portions of light-not the transmitted portions-that travel through the alleged WDM and that, according to Sorin, may have "beam divergence, e.g., caused by diffraction." Compare Oostman at 1 [0003], FIG. 1 with Sorin at 1 [0043], FIG. 4.
Applicant argues that …., Accordingly, even if Sorin's collimating mirrors 448 were beneficial for its system "to re-collimate the beam as [it] travels through the splitter 430" at least because the "beam travel[ling] through the splitter" comprised the reflected portions of light that were more-susceptible to beam divergence, the Office has not shown that a POSITA would have seen the same need for such collimating mirrors 448 in Oostman's FIG. 1 embodiment where the transmitted portions of light that did not have the same susceptibility to beam divergence are what travel through the alleged WDM.
Applicant argues that …., (2) The Office Has Not Shown Tilting Errors Were a Problem for Oostman's Flow Cytometer
“…………………….” the Office has not shown that Oostman's FIG. 1 flow cytometer suffered from such tilting errors and thus has not shown that a POSITA would have included a concave mirror like He's to address such errors. Action at 5-6; see also He at 5:5-24. ………………………………………………………………………… …………………..
Nor has the Office shown that that a POSITA otherwise would have understood the arrangement of Oostman's dichroic mirrors 25-44 to give rise to such tilting- error issues, a showing that-again-the Office would not have been able to make in view of the differences between Oostman's FIG. 1 arrangement and the arrangement He addresses.
Applicant argues that ……. In particular, He addresses a specific problem that affected compact zigzag WDM modules like the module of He's FIG. 1 ……… ……… ………………………………………………………………………………………………………………….. He thus identified "a need for compact WDM modules that minimize the problem of error amplification and provide high tolerance for manufacturing with high yield" for these zigzag configurations. ……………………………… ….…….. …………
………….. He's proposed solution using "at least a concave mirror" in which "each of the concave mirrors is placed where an incident traveling distance of a light beam is substantially similar or equal to the reflected traveling distance of the light beam" was thus meant for such zigzag configurations so "any tilting errors carried in the light beam are compensated by the light beam going to and reflecting from the concave mirror[(s)]." ……………….
Further, Applicant argues that On the other hand, as noted above and as shown below, in the alleged WDM of Oostman (see Action at 3), the dichroic mirrors 25-44 are serially arranged in a row on axis 24, not in the zigzag pattern that, per He, was susceptible to tilting error propagation. ………..………………………… ……… …………………………………………………………………………………………………………………………………………………….. Thus, while the "tilting error propagation" that He addresses affects zigzag WDM configurations where reflected legs are propagated throughout the WDM, in Oostman's FIG. 1 the transmitted legs are propagated throughout the WDM, with each of the "reflected leg[s]" merely being reflected to a single "detector PMT" in a manner that does not give rise to "tilting error propagation" to subsequent optical elements.
Applicant argues that ………………..., Accordingly, the Office has not identified any portion of this optical path in Oostman's FIG. 1 that experiences the kind of lateral and angular error amplification that He describes for zigzag compact WDM devices. Absent that predicate problem, He's compensating concave mirror has no demonstrated relevance to Oostman, rendering the Office's rationale premised on addressing "tilting errors" in Oostman's FIG. 1 unsupported (Action at 6).
In conclusion, Applicant argues that Because the Office has not shown that Oostman's dichroic mirrors 25-44 give rise to the "beam divergence" and "tilting error[]" issues that the Office contends would have motivated the inclusion of a concave mirror in Oostman's FIG. 1, the Office has not offered a creditable rationale to support the obviousness rejection, which accordingly should be withdrawn as lacking rational underpinnings. For at least these reasons, independent claim 1 and its dependent claims are patentable over Oostman, Sorin, and He. Applicant respectfully requests reconsideration and withdrawal of the rejections.
Examiner's response:
With respect to argument (b), it is respectfully pointed out to applicant that for the same reasons as discussed above in relation to arguments (a), applicant arguments regarding arguments (b) is/are not persuasive. Applicant has/have argue specifically attacking references individually, wherein or whereas the rejection(s) is based on obviousness and based on combinations of references. Applicant is reminded that it is well settled that, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, the prior art cited references Oostman, Sorin and He are fairly and reasonably concern with using wavelength-division multiplexing (WDMs), (WDMs) a technology which multiplexes a number of optical carrier signals onto a single optical fiber by using different wavelengths (i.e., colors) of laser light or using multiple light wavelengths to send signal over the same medium is known in the art in order to monitoring and analyzing cytometer and/or multi-color flow cytometer considering the BRI, consistent with the instant specification. As such, the cited references are considered as an analogous art, and the reason to combine and the rejections is/are proper because one of ordinary skill at the time the invention was made would have fairly and reasonably recognized that the prior art does properly support a rejection of the claimed invention under 35 U.S.C. 103 as detailed above.
Additionally, it is respectfully pointed out to applicant that this/these argument(s) is/are not persuasive because Applicant have not provided any proof and/or any factual evidence that are not obvious and applicant has not provided any factual evidence that suggest or obviate the examiner's position would not have been obvious since the cited references are considered as an analogous art. Rather, the arguments merely appear to be a recitation with respect to the manner in which a claimed apparatus/device/system is intended to be employed which does not differentiate the claimed apparatus/device/system from a prior art apparatus/device/system. It is respectfully pointed out to applicant that these arguments are not persuasive because, it has been held that a recitation with respect to the manner in which a claimed apparatus/device/system is intended to be employed does not differentiate the claimed apparatus/device/system from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ 2d 1647 (1987). Further, Applicant is reminded that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). It is respectfully pointed out to applicant that these arguments are not persuasive because the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In conclusion, it is respectfully pointed out to applicant that these arguments are not persuasive since both the instant application claims (disclosure as published [par.0032]) and the prior art cited references Oostman, Sorin and He are fairly and reasonably concern with using wavelength-division multiplexing (WDMs), the cited references are considered as an analogous art, and the rejections under 35 U.S.C. 103 is/are proper. It is respectfully pointed out to applicant that this/these argument(s) is/are not persuasive because applicant has not provided any factual evidence that suggest or obviate the examiner's position would not have been obvious since the cited references are considered as an analogous art. A dichroic or dichroic mirror -refers to any optical device which can split a beam of light into two beams with differing wavelengths. Such devices include mirrors and filters, usually treated with optical coatings, which are designed to reflect light over a certain range of wavelengths and transmit light which is outside that range. Each of the dichroic mirror(s) make-up or each of the dichroic mirror(s) is made up of plurality of filters (dichroic mirror(s) that include(s) optical filter that reflects some wavelengths (colors) of light and transmits others), obviously the makeup includes plurality of filters and mirror(s). Therefore, it is respectfully pointed out to applicant that these arguments are not persuasive.
Finally, it is respectfully pointed out to applicant that this argument(s) (a) is/are not persuasive because one of ordinary skill before the effective filing date of the claimed invention and/or at the time the invention was made would have fairly and reasonably recognized that the prior art does properly support a rejection of the claimed invention under 35 U.S.C. 103 because the cited references are considered as an analogous art to instant applicant claims. As such, the rejections are proper, and the argument/remarks for request for reconsideration does not appear to place the application in condition for allowance, and the claims are still rejected as shown in the detail above.
Conclusion
THIS ACTION IS MADE FINAL. 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 Isiaka Akanbi whose telephone number is (571) 272-8658. The examiner can normally be reached on 8:00 a.m. - 4:30 p.m.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur R. Chowdhury can be reached on (571) 272-2287. The fax phone number for the organization where this application or proceeding is assigned is 703-872-9306.
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/ISIAKA O AKANBI/Primary Examiner, Art Unit 2877
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