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 .
Claim Objections
Claims 9-11, 18, and 19 are objected to because of the following informalities:
As for claims 9-11, the phrase “percent of the frequencies is the set of frequencies” should be amended to read “percent of the frequencies in the set of frequencies . . .”.
As for claim 18, in line 3 of the claim, the term “nyquist” should be capitalized.
As for claim 19, the phrase “The method of 15” should be amended to read “The method of claim 15”.
Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-19 rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-19 of prior U.S. Patent No. 10,184,782. This is a statutory double patenting rejection.
Claim correspondence is as follows:
Claim 1 of the instant application with claim 1 of the ‘782 patent.
Claim 2 of the instant application with claim 2 of the ‘782 patent.
Claim 3 of the instant application with claim 3 of the ‘782 patent. The examiner considers “a numerical value greater than a numerical value of the first frequency” to be the same as “the second frequency is larger than the first frequency”.
Claim 4 of the instant application with claim 4 of the ‘782 patent. The “numerical value greater than/less than” comparison with “larger”/”smaller” from claim 3 applies here as well.
Claim 5 of the instant application with claim 5 of the ‘782 patent. The “numerical value greater than “ comparison with “larger” from claim 3 applies here as well.
Claim 6 of the instant application with claim 8 of the ‘782 patent.
Claim 7 of the instant application with claim 9 of the ‘782 patent.
Claim 8 of the instant application with claim 10 of the ‘782 patent.
Claim 9 of the instant application with claim 11 of the ‘782 patent.
Claim 10 of the instant application with claim 12 of the ‘782 patent.
Claim 11 of the instant application with claim 13 of the ‘782 patent.
Claim 12 of the instant application with claim 14 of the ‘782 patent.
Claim 13 of the instant application with claim 6 of the ‘782 patent.
Claim 14 of the instant application with claim 7 of the ‘782 patent.
Claim 15 of the instant application with claim 15 of the ‘782 patent.
Claim 16 of the instant application with claim 16 of the ‘782 patent.
Claim 17 of the instant application with claim 17 of the ‘782 patent.
Claim 18 of the instant application with claim 18 of the ‘782 patent.
Claim 19 of the instant application with claim 19 of the ‘782 patent.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,495,442. Although the claims at issue are not identical, they are not patentably distinct from each other because the system claimed in the ‘442 patent can perform the method of the instant application as follows.
Regarding claim 1, claim 1 of the ‘442 patent claims a method of optically imaging a sample utilizing a frequency-domain optical coherence tomography (OCT) system (see lines 1-2 of the ‘442 claim – the system of that claim can be used to perform the method of the instant application) comprising a wavelength-swept light source (see line 3 of the ‘442 claim), the method comprising the steps of illuminating the sample with a first portion of light emitted by the wavelength-swept light source (see lines 3-5 of the ‘442 claim); illuminating a reference plane with a second portion of light emitted by the wavelength-swept light source (see lines 5-7 of the ‘442 claim); shifting a frequency of at least one of the first portion of light or the second portion of light to define a sampling range including a set of frequencies (see lines 8-11 of the ‘442 claim); and generating a displayed imaging range from the sampling range, the displayed imaging range consisting essentially of only a subset of the set of frequencies within the sampling range (see lines 12-16 of the ‘442 claim).
Further claim correspondence is as follows:
Claim 2 of the instant application with claim 2 of the ‘442 patent.
Claim 3 of the instant application with claim 3 of the ‘442 patent.
Claim 4 of the instant application with claim 4 of the ‘442 patent.
Claim 5 of the instant application with claim 5 of the ‘442 patent.
Claim 6 of the instant application with claim 8 of the ‘442 patent.
Claim 7 of the instant application with claim 9 of the ‘442 patent.
Claim 8 of the instant application with claim 10 of the ‘442 patent.
Claim 9 of the instant application with claim 11 of the ‘442 patent.
Claim 10 of the instant application with claim 12 of the ‘442 patent.
Claim 11 of the instant application with claim 13 of the ‘442 patent.
Claim 12 of the instant application with claim 14 of the ‘442 patent.
Claim 13 of the instant application with claim 6 of the ‘442 patent.
Claim 14 of the instant application with claim 7 of the ‘442 patent.
Regarding claim 15, claim 15 of the ‘442 patent claims a method of optically imaging a sample utilizing a frequency-domain optical coherence tomography (OCT) system (see lines 1-2 of the ‘442 claim – the system of that claim can be used to perform the method of the instant application) comprising (i) an optical source for emitting output light over a range of wavelengths (see lines 3-4 of the ‘442 claim) and (ii) an interferometer for detecting interference over a sampling range of frequencies each associated with a different depth within the sample (see lines 5-8 of the ‘442 claim), the method comprising illuminating the sample with a first portion of the output light (see lines 9-10 of the ‘442 claim); illuminating a reference plane with a second portion of the output light (see lines 11-12 of the ‘442 claim); and associating larger depths within the sample with more negative frequencies within the sampling range (see lines 13-15 of the ‘442 claim); wherein the sampling range extends from a first frequency to a second frequency and is substantially centered on a carrier frequency (see lines 16-18 of the ‘442 claim).
Further claim correspondence is as follows:
Claim 16 of the instant application with claim 16 of the ‘442 patent.
Claim 17 of the instant application with claim 17 of the ‘442 patent.
Claim 18 of the instant application with claim 18 of the ‘442 patent.
Claim 19 of the instant application with claim 19 of the ‘442 patent.
Claims 1, 2, 13-15, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 8, 10, and 11 of U.S. Patent No. 11,175,125. Although the claims at issue are not identical, they are not patentably distinct from each other because the system claimed in the ‘125 patent can perform the method of the instant application as follows.
Regarding claim 1, claims 7 and 8 of the ‘125 patent claims a method of optically imaging a sample utilizing a frequency-domain optical coherence tomography (OCT) system (see lines 1-3 of claim 7 – the system of that claim can be used to perform the method of the instant application) comprising a wavelength-swept light source (see line 4 of claim 7), the method comprising the steps of illuminating the sample with a first portion of light emitted by the wavelength-swept light source (see lines 4-6 of claim 7); illuminating a reference plane with a second portion of light emitted by the wavelength-swept light source (see lines 6-7 of the claim 7); shifting a frequency of at least one of the first portion of light or the second portion of light to define a sampling range including a set of frequencies (see claim 8); and generating a displayed imaging range from the sampling range, the displayed imaging range consisting essentially of only a subset of the set of frequencies within the sampling range (see lines 19-29 of claim 7).
Further claim correspondence is as follows:
Claim 2 of the instant application with claim 7 of the ‘125 patent (see lines 27-29).
Claim 13 of the instant application with claim 10 of the ‘125 patent.
Claim 14 of the instant application with claims 10 and 11 of the ‘125 patent.
Regarding claim 15, claim 7 of the ‘125 patent claims a method of optically imaging a sample utilizing a frequency-domain optical coherence tomography (OCT) system (see lines 1-3 of the ‘125 claim – the system of that claim can be used to perform the method of the instant application) comprising (i) an optical source for emitting output light over a range of wavelengths (see lines 4-5 of the ‘125 claim) and (ii) an interferometer for detecting interference over a sampling range of frequencies each associated with a different depth within the sample (see lines 8-14 of the ‘125 claim), the method comprising illuminating the sample with a first portion of the output light (see lines 4-6 of the ‘125 claim); illuminating a reference plane with a second portion of the output light (see lines 6-7 of the ‘125 claim); and associating larger depths within the sample with more negative frequencies within the sampling range (see lines 19-20 of the ‘125 claim); wherein the sampling range extends from a first frequency to a second frequency and is substantially centered on a carrier frequency (see lines 19-29 of the ‘125 claim).
Further claim correspondence is as follows:
Claim 17 of the instant application with claim 10 of the ‘125 patent.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,686,572. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘572 patent claim a system that is capable of performing the method of the instant application as set forth below.
Regarding claim 1, claim 1 of the ‘572 patent claims a method of optically imaging a sample utilizing a frequency-domain optical coherence tomography (OCT) system (see lines 1-2 of the ‘572 claim – the system of that claim can be used to perform the method of the instant application) comprising a wavelength-swept light source (see line 3 of the ‘572 claim), the method comprising the steps of illuminating the sample with a first portion of light emitted by the wavelength-swept light source (see lines 4-5 of the ‘572 claim); illuminating a reference plane with a second portion of light emitted by the wavelength-swept light source (see lines 6-7 of the ‘572 claim); shifting a frequency of at least one of the first portion of light or the second portion of light to define a sampling range including a set of frequencies (see lines 8-11 of the ‘572 claim); and generating a displayed imaging range from the sampling range, the displayed imaging range consisting essentially of only a subset of the set of frequencies within the sampling range (see lines 12-15 of the ‘572 claim).
Further claim correspondence is as follows:
Claim 2 of the instant application with claim 2 of the ‘572 patent.
Claim 3 of the instant application with claim 3 of the ‘572 patent.
Claim 4 of the instant application with claim 4 of the ‘572 patent.
Claim 5 of the instant application with claim 5 of the ‘572 patent.
Claim 6 of the instant application with claim 6 of the ‘572 patent.
Claim 7 of the instant application with claim 7 of the ‘572 patent.
Claim 8 of the instant application with claim 8 of the ‘572 patent.
Claim 9 of the instant application with claim 9 of the ‘572 patent.
Claim 10 of the instant application with claim 10 of the ‘572 patent.
Claim 11 of the instant application with claim 11 of the ‘572 patent.
Claim 12 of the instant application with claim 12 of the ‘572 patent.
Claim 13 of the instant application with claim 13 of the ‘572 patent.
Claim 14 of the instant application with claim 14 of the ‘572 patent.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,169,124. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘124 patent claim all the salient limitations of the instant application as follows.
Regarding claim 1, claim 1 of the ‘124 patent claims a method of optically imaging a sample utilizing a frequency-domain optical coherence tomography (OCT) system (see lines 1-2 of the ‘124 claim) comprising a wavelength-swept light source (see line 3 of the ‘124 claim), the method comprising the steps of illuminating the sample with a first portion of light emitted by the wavelength-swept light source (see lines 5-6 of the ‘124 claim); illuminating a reference plane with a second portion of light emitted by the wavelength-swept light source (see lines 7-8 of the ‘124 claim); shifting a frequency of at least one of the first portion of light or the second portion of light to define a sampling range including a set of frequencies (see lines 9-11 of the ‘124 claim); and generating a displayed imaging range from the sampling range, the displayed imaging range consisting essentially of only a subset of the set of frequencies within the sampling range (see lines 12-15 of the ‘124 claim).
Further claim correspondence is as follows:
Claim 2 of the instant application with claim 2 of the ‘124 patent.
Claim 3 of the instant application with claim 3 of the ‘124 patent.
Claim 4 of the instant application with claim 4 of the ‘124 patent.
Claim 5 of the instant application with claim 5 of the ‘124 patent.
Claim 6 of the instant application with claim 8 of the ‘124 patent.
Claim 7 of the instant application with claim 9 of the ‘124 patent.
Claim 8 of the instant application with claim 10 of the ‘124 patent.
Claim 9 of the instant application with claim 11 of the ‘124 patent.
Claim 10 of the instant application with claim 12 of the ‘124 patent.
Claim 11 of the instant application with claim 13 of the ‘124 patent.
Claim 12 of the instant application with claim 14 of the ‘124 patent.
Claim 13 of the instant application with claim 6 of the ‘124 patent.
Claim 14 of the instant application with claim 7 of the ‘124 patent.
Regarding claim 15, claim 15 of the ‘124 patent claims a method of optically imaging a sample utilizing a frequency-domain optical coherence tomography (OCT) system (see lines 1-3 of the ‘124 claim) comprising (i) an optical source for emitting output light over a range of wavelengths (see lines 3-4 of the ‘124 claim) and (ii) an interferometer for detecting interference over a sampling range of frequencies each associated with a different depth within the sample (see lines 4-7 of the ‘124 claim), the method comprising illuminating the sample with a first portion of the output light (see lines 8-9 of the ‘124 claim); illuminating a reference plane with a second portion of the output light (see lines 10-11 of the ‘124 claim); and associating larger depths within the sample with more negative frequencies within the sampling range (see lines 12-14 of the ‘124 claim); wherein the sampling range extends from a first frequency to a second frequency and is substantially centered on a carrier frequency (see lines 15-17 of the ‘124 claim).
Further claim correspondence is as follows:
Claim 16 of the instant application with claim 16 of the ‘124 patent.
Claim 17 of the instant application with claim 17 of the ‘124 patent.
Claim 18 of the instant application with claim 18 of the ‘124 patent.
Claim 19 of the instant application with claim 19 of the ‘124 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pat. 7,733,497 to Yun; US 2003/0025913 to Izatt; and US 201/0079246 to Short, all of which were initially cited as part of prosecution of parent application 14/278424.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael A. Lyons whose telephone number is (571)272-2420. The examiner can normally be reached Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached at 571-270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael A Lyons/Primary Examiner, Art Unit 2877 June 9, 2026
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