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) submitted on 12/06/2024 has been 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).
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Claims 60-71 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 15 of U.S. Patent No. 10,775,597. Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of independent claim 60 from the instant invention are to be found claim 1 of U.S. Patent No. 10,775,597, except for minor difference(s) as shown in the table below.
It is clear that all the elements of the instant application as claimed are to be found in patent claim(s) (as the patent claim(s) fully encompasses the application claim(s)). The difference between the application claim(s) and the patent claim(s) lies in the fact that the patent claim includes more elements and is thus much more specific.
Thus the invention of claims of the patent is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the claims of the instant application are anticipated by the claims of the patent 11,022,726, thereby the instant invention is not patentably distinct, where both inventions are directed to: ***.
Table shows the list of conflicting claims:
Claims from the instant application 18971420
Claims from application 16107551 now patent 10775597
Claim 60. An interferometric scattering microscope for characterizing interactions and/or assembly of individual biomolecules, the interferometric scattering microscope comprising: a sample holder for holding a sample in a sample location; an illumination source arranged to provide illuminating light; a detector; an optical system being arranged to direct illuminating light onto the sample location and being arranged to collect output light in reflection, the output light comprising both light scattered from the sample location and illuminating light reflected from the sample location, and to direct the output light to the detector; and a spatial filter positioned to filter the output light, the spatial filter being arranged to pass output light but with a reduction in intensity that is greater within a predetermined numerical aperture than at larger numerical apertures.
Claims 1. An interferometric scattering microscope comprising: a sample holder for holding a sample in a sample location; an illumination source arranged to provide illuminating light; a detector; an optical system being arranged to direct illuminating light onto the sample location and being arranged to collect output light in reflection, the output light comprising both light scattered from the sample location and illuminating light reflected from the sample location, and to direct the output light to the detector; and a spatial filter positioned to filter the output light, the spatial filter being arranged to pass output light but with a reduction in intensity that is greater within a predetermined numerical aperture than at larger numerical apertures and wherein the reduction in intensity within said predetermined numerical aperture is to 10.sup.−2 of the incident intensity or less.
Claim 61.
Claim 2.
Claim 62.
Claim 3.
Claim 63.
Claim 4.
Claim 64.
Claim 5.
Claim 65.
Claim 6.
Claim 66.
Claim 7.
Claim 67.
Claim 8.
Claim 68.
Claim 9.
Claim 69.
Claim 10.
Claim 70.
Claim 11.
Claim 71.
Claim 12.
Claim Rejections - 35 USC § 103
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.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 60-61, 63-65, 67 and 70-71 are rejected under 35 U.S.C. 103 as being unpatentable over Fang-Yen et al. (US PUB 2005/0105097; herein after “Fang-Yen”) in view of Yun et al. (US PUB 2009/0323056; herein after “Yun”).
Fang-Yen and Yun disclose microscope systems and methods. Therefore, they are analogous art.
Regarding claim 60, Fang-Yen teaches an interferometric scattering microscope (i.e., microscopy systems 1300, 1500 as shown at least in FIGS. 53 and 55, see para. [0298] to [0302]) comprising: a sample holder (i.e., a glass coverslip 2004) for holding a sample (a cell 2002) in a sample location (see para. [0273], FIG. 33); an illumination source (SLD 1302) arranged to provide illuminating light (1303); a detector (CCD 1230, 1330); an optical system (i.e., an objective lens 1204, 1304 and a tube lens 1206, 1306) being arranged to direct illuminating light (1303) onto the sample location (1210, 1310) and being arranged to collect output light in reflection (see para. [0317] to [0319], FIGS. 53 & 55), the output light (1220, 1320) comprising both light scattered from the sample location and illuminating light reflected from the sample location (i.e., the phase-reference interferometry system is dual-beam interferometry in accordance with a preferred embodiment of the present invention and requires collection of not only the light scattered from the sample of interest, but also the reflection from a fixed referenced surface located in front of the sample, see para. [0273], FIG. 33), and to direct the output light (1220, 1320) to the detector (CCD 1230, 1330) (see para. [0319] and as shown in FIGS. 53 & 55); and a spatial filter (F, 1508) positioned to filter the output light (as shown in FIG. 55), the spatial filter being arranged to pass output light but with a reduction in intensity that is greater within a predetermined numerical aperture than at larger numerical apertures (i.e., the spatial filter, F, 1508 provides control of the amplitude of individual spatial frequencies (e.g., intensity). In combination with the phase control provided by a SLM in accordance with the present invention, such amplitude control facilitates, for example, investigating small organelles inside a cell, as an enhancement of the high frequency component can improve contrast, see para. [0328] and [0329], FIG. 55, also see para. [0023], [0272], [0273], [0295], [0307] to [0309], [0357], and a microscopy system and method that reduces or eliminates uncorrelated noise from the interferometric signal, see para. [0300]).
Although Fang-Yen teaches the spatial filter provides control of the amplitude of individual spatial frequencies (e.g., intensity), such amplitude control facilitates an enhancement of the high frequency component that can improve contrast (see para. [0328]).
However, Fang-Yen does not explicitly teach he spatial filter being arranged to pass output light but with a reduction in intensity that is greater within a predetermined numerical aperture than at larger numerical apertures.
In a related field of endeavor Yun teaches a dual-axis confocal configuration can maximize axial resolution for a given NA (e.g., a predetermined NA) and at the same time allows a reduction of back-reflections (e.g., intensity reduction) and elastic scattering components (see para. [0065]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Fang-Yen such that maximize axial resolution for a given NA (e.g., a predetermined NA) and allows a reduction of back-reflections (e.g., intensity reduction) as taught by Yun, for the purpose of enhancing depth sectioning, maximizing axial resolution for a given NA, and reducing the amount of stray or spurious unwanted radiation of a biological sample.
Regarding claim 61, Fang-Yen teaches that the predetermined numerical aperture is the numerical aperture of the illuminating light reflected from the sample location that is comprised in the output light, optionally wherein the predetermined numerical aperture is less than 1, preferably less than 0.5 (see para. [0023], [0273], [0283], [0295]).
Regarding claim 63, Fang-Yen teaches the illuminating light is spatially and temporally coherent (see para. [0177] and [0315]).
Regarding claim 64, Fang-Yen teaches the optical system comprises a beam splitter (1232, 1232) arranged to split the optical paths (1303) for the illuminating light (1302) and the output light (1220, 1302), the spatial filter (F, 1508) being part of the beam splitter (as shown at least in FIGS. 53 and 55).
Regarding claim 65, Fang-Yen teaches the spatial filter is transmissive, or wherein the spatial filter is reflective (i.e., transmissive spatial filter 1508, see FIG. 55).
Regarding claim 67, Fang-Yen teaches the optical system includes an objective lens (1204, 1304) and the spatial filter (1508) is positioned directly behind the back aperture of the objective lens (as shown in FIG. 55), or wherein the optical system includes an objective lens and the spatial filter is positioned at a conjugate focal plane of the back focal plane of the objective lens.
Regarding claim 70, Fang-Yen teaches the microscope (1300, 1500) is arranged to operate in a wide-field mode and detector (1230, 1330) comprises an image sensor (CCD) that is arranged to capture an image of the sample (see para. [0319] and [0328], FIGS. 53 & 55), or wherein the microscope is arranged to operate in a confocal mode (see para. [0023]), and the microscope further comprises a scanning arrangement arranged to scan a region of the sample to build up an image (see para. [0023] and [0288], FIG. 45).
Regarding claim 71, Fang-Yen teaches the sample holder (i.e., a glass coverslip 2004) comprises a surface for holding the sample (2002) thereon (see para. [0273], FIGS. 33).
Claim 62 and 69 are rejected under 35 U.S.C. 103 as being unpatentable over Fang-Yen et al. (US PUB 2005/0105097; herein after “Fang-Yen”) in view of Yun et al. (US PUB 2009/0323056; herein after “Yun”), and further in view of Allen (US PUB 2006/0127010).
Regarding claim 62, Fang-Yen teaches the spatial filter is arranged to pass output light with a reduction in intensity within said predetermined numerical aperture (see para. [0160]).
Fang-Yen in view of Yun fails to teach intensity within said predetermined numerical aperture to 10-2 of the incident intensity or less and intensity within said predetermined numerical aperture to 10-4 of the incident intensity or more.
In a related field of endeavor Allen teaches Assuming that seedlings and small plants require the same light intensity, only a small fraction of that 2.3 W/plant would be necessary in early growth stages. For example, a 1'' diameter seedling would require only about 1% (0.0005 m.sup.2) of the light required for the full-grown plant (see para. [0080]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Fang-Yen in view of Yun such that seedling would require only about 1% (0.0005 m.sup.2) of the light intensity as taught by Allen, for the purpose of maximizing axial resolution of a biological sample.
Furthermore, it has held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges such as incident intensity involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 69, Fang-Yen in view of Yun teaches the sample holder (2004) holds a sample comprising objects (a cell 2002) having a scattering cross section (i.e., the different axial positions of the sample and reference challenge the efficient simultaneous collection of both reference and sample scattering (e.g., a scattering cross section), especially for a high numerical aperture optical system, see para. [0273], FIG. 33).
Fang-Yen in view of Yun does not teach the sample holder holds a sample comprising objects having a scattering cross section with respect to the illuminating light of 10-17 m2 and/or less or 10-26 m2 or more.
In a related field of endeavor Allen teaches Assuming that seedlings and small plants require the same light intensity, only a small fraction of that 2.3 W/plant would be necessary in early growth stages. For example, a 1'' diameter seedling would require only about 1% (0.0005 m.sup.2) of the light required for the full-grown plant (see para. [0080]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Fang-Yen in view of Yun such that seedling would require only about 1% (0.0005 m.sup.2) of the light required for the full grown plant as taught by Allen, for the purpose of maximizing axial resolution of a biological sample.
Furthermore, it has held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges such as illuminating light involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 66, is rejected under 35 U.S.C. 103 as being unpatentable over Fang-Yen et al. (US PUB 2005/0105097; herein after “Fang-Yen”) in view of Yun et al. (US PUB 2009/0323056; herein after “Yun”), and further in view of Truong et al. (US PUB 2011/0134521; herein after “Truong”).
Regarding claim 66, Fang-Yen in view of Yun teaches the sample holder (i.e., a glass coverslip 2004, see para. [0273], FIG. 33).
Fang-Yen in view of Yun does not teach the sample holder incorporates a solid immersion lens, optionally wherein the solid immersion lens is hemispherical or superhemispherical.
In a related field of endeavor Truong teaches sample chamber. This is made of a suitable material and design for the sample and the imaging application. For example, if the sample needs to be in water, then (4) has to be water-tight, with optical access windows. If water-immersion objectives are to be used, then appropriate water-sealing features have to be implemented (see para. [0065]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Fang-Yen in view of Yun such that a hemispherical or superhemispherical immersion objective can be used as taught by Truong, for the purpose of maximizing axial resolution and reducing the amount of stray or spurious unwanted radiation of a biological sample.
Claim 68 is rejected under 35 U.S.C. 103 as being unpatentable over Fang-Yen et al. (US PUB 2005/0105097; herein after “Fang-Yen”) in view of Yun et al. (US PUB 2009/0323056; herein after “Yun”), and further in view of Fischer-Colbrie et al. (US PUB 2006/0024722; herein after “Fischer”).
Regarding claim 68, Fang-Yen in view of Yun teaches the sample holder (a glass coverslip 2004) holds a sample comprising objects (a cell 2002) having a mass of 5000 kDa or less, optionally wherein the sample holder holds a sample comprising objects having a mass of 10 kDa or more (i.e., a biological cell is proportional to the non-aqueous mass of the cell, see para. [0367]).
Fang-Yen in view of Yun does not teach objects having a mass of 5000 kDa or less or 10 kDa or more.
In a related field of endeavor Fischer teaches the sample is contacted with trypsin, and the mass corresponding to the mass of a fragment of an oncofetal fibronectin indicating molecules can be, for example, 55 kDa, 65 kDa, 120 kDa, 160 kDa, 200 kDa or 235 kDa (see para. [0112]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Fang-Yen in view of Yun such that the mass corresponding to, for example, 55 kDa, 65 kDa, 120 kDa, 160 kDa, 200 kDa or 235 kDa as taught by Fischer, for the purpose of maximizing axial resolution of a biological sample.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. OHASHI et al. (US PUB 2007/0195330) teaches “The near-infrared interferable light beam converged by the objective lens R is reflected by the object as indicated by chain lines. In the following description, the near-infrared interferable light beam reflected by the object will be referred to as measurement light. The measurement light greatly scatters because of reflection by the object. In other words, the measurement light forms a greatly expanded beam. The greatly expanded light beam is regulated to have parallel rays upon passage through the objective lens R and then passes through the polarization plate B2. Since the direction of linear polarization of the polarization plate B2 coincides with the polarization plane of the near-infrared interferable light beam emitted from the light source 12, the polarization plane of the measurement light beam having passed through the polarization plate B2 coincides with that of the near-infrared interferable light beam having passed through the beam splitter 21. When the measurement light beam having passed through the polarization plate B2 reaches the beam splitter 21, it is reflected by the aluminum deposition layer 21b. Since the measurement light beam has expanded greatly, the greater portion of the measurement light beam having reached the beam splitter 21 changes its propagation direction by 90º to propagate toward the light detection section 3.”, paragraph 0054, Figure 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUSTAK CHOUDHURY whose telephone number is (571)272-5247. The examiner can normally be reached on M-F 8AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached on (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MUSTAK CHOUDHURY/Primary Examiner, Art Unit 2872
August 28, 2026
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