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 .
DETAILED ACTION
The instant application having Application No. 18/979,828 filed on December 13, 2024 is presented for examination by the examiner.
Examiner Notes
Examiner cites particular columns and line numbers in the references as applied to the claims below 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. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety 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.
Priority
As required by the M.P.E.P. 214.03, acknowledgement is made of applicant’s claim for priority based on applications filed on December 15, 2023 (Germany DE10 2023 135 360.8).
Receipt is acknowledged of papers submitted under 37 CFR 1.55, which papers have been placed of record in the file.
Drawings
The applicant’s drawings submitted on December 13, 2024 are acceptable for examination purposes.
Information Disclosure Statement
As required by M.P.E.P. 609, the applicant’s submission of the Information Disclosure Statement dated December 13, 2024 is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending.
Claim Interpretation
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.
In particular, claim 19 recites “means adapted such that they carry out the method (100) according to claim 1” which is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “by means of the reference objective” and “by means of the immersion objective” in claim 10.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Furthermore, it is worth noting that the “means adapted such that they carry out the method (100) according to claim 1” in claim 19 is interpreted as only requiring means that it is fully capable of performing the method of claim 1. In particular, because claim 19 is directed to a device, the steps of claim 1 are interpreted as functional limitations in the context of the arrangement of claim 19.
Claim Rejections - 35 USC § 112
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.
Claims 19 and 20 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 19, the claim limitation “means adapted such that they carry out the method (100) according to claim 1” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to clearly link the structure, material, or acts to the function. Paragraphs [0097]-[0109] describe possible means that perform some of the steps of the method of claim 1. However, in each of paragraphs [0100]-[0103] each of the exemplary means is presented as being optional “The means can comprise”, “Optionally, the means can comprise”, “the means might comprise”. Similarly, paragraphs [0104]-[0106] describe optional configurations of the control unit. Thus, the written description fails to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 20, the preamble of claim 20 states that 20 is directed to “the arrangement.” There is insufficient antecedent basis for this limitation in the claim. In particular, claim 20 depends from claim 18, which is a method. At the examiner’s best guess, claim 20 was intended to depend from claim 19, not claim 18. Note that if claim 20 were amended to claim a method, the further limitations thereof are identical to current claim 18. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 19 and 201 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tetsuya JP 2012093387 A (hereafter Tetsuya).
Regarding claim 19, Tetsuya teaches “An arrangement (200) (microscope system 1), comprising:
an image-creating optical system (2) (page 2, “DESCRIPTION-OF-EMBODIMENTS” second paragraph “an inverted fluorescence microscope system that observes a specimen S” with CCD camera unit 14)
having an immersion objective (1) (immersion objective lens 10b) and a reference objective (3) (dry objective lens 10a), and
means (see elements thereof that follow) adapted such that they carry out the method (100) according to claim 1 (the elements as follows are fully capable of carrying out the method below, and thus are “adapted such that” they carry out the method.).
1. A method (100) for ascertaining offset values for correcting an offset of an immersion objective (1) (e.g. page 9 second paragraph “The immersion medium filling determination unit 42 calculates a difference between the current in-focus coordinate Zn detected by the coordinate detection unit 25 and the in-focus coordinate Zn−1 recorded in the in-focus coordinate recording unit 41 at the previous photographing.”) of an image-creating optical system (2) (microscope system 1), the method (100) comprising:
imaging an object (4) (page 3 third paragraph: “the sample S is imaged by the CCD camera unit 14”) using a reference objective (3) of the image-creating optical system (2) (e.g. page 7 fifth paragraph “when the dry system objective lens 10a is used”) and the immersion objective (1) (e.g. page 7 sixth paragraph “when the immersion objective lens 10b is used”) without immersion (101, 110, 120) (page 8 second and third paragraphs “As illustrated in FIG. 10, when the immersion medium is insufficient… the lack of the immersion medium can be detected by detecting the change of the in-focus coordinates.” Thus, the microscope system of Tetsuya is fully capable of imaging an object using the immersion objective without immersion being present); and
ascertaining offset values for an offset between the reference objective (3) and the immersion objective (1) with immersion based on image representations of the object (4) (103, 131, 141) (page 9 second paragraph “The immersion medium filling determination unit 42 calculates a difference between the current in-focus coordinate Zn detected by the coordinate detection unit 25 and the in-focus coordinate Zn−1 recorded in the in-focus coordinate recording unit 41 at the previous photographing.” This is not only an offset relative to the immersion objective focus position when sufficient immersion fluid is present, but also an offset relative to the dry objective, see page 7 third and last paragraphs “FIG. 8 is a diagram illustrating an in-focus state of the dry system objective lens. FIG. 9 is a diagram illustrating an in-focus state of the immersion objective lens. Here, it is assumed that the dry objective lens 10a illustrated in FIG. 8 and the immersion objective lens 10b illustrated in FIG. 9 have the same focal length… As illustrated in FIGS. 8 and 9, the drying objective lens 10 a and the immersion objective lens 10 b have different in-focus positions in the optical axis direction by the thickness t of the glass dish 3. When the immersion objective lens 10b is switched, the in-focus coordinates change by the thickness t.”).”
Assuming claim 20 was intended to depend from claim 19:
Regarding claim 20, Tetsuya teaches “The arrangement (200) according to claim [19] (see claim 19 above), wherein the image-creating optical system (2) is a light microscope (page 3 fourth paragraph “the microscope system 1 can perform not only visual observation by the fluorescence observation means but also photographing of the specimen S.” thus microscope system 1 is a light microscope at least in the sense that the observational optics operate in a manner similar enough to visible light to be called a “visual observation”).”
Allowable Subject Matter
Claims 1-18 and 21 are allowed.
Claim 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action, if, in such a correction, claim 20 still depended from any of claims 1-18.
Reference will be made to Tetsuya JP 2012093387 A (hereafter Tetsuya) as the closest prior art reference.
Regarding claim 1, Tetsuya teaches “A method (100) for ascertaining offset values for correcting an offset (e.g. page 9 second paragraph “The immersion medium filling determination unit 42 calculates a difference between the current in-focus coordinate Zn detected by the coordinate detection unit 25 and the in-focus coordinate Zn−1 recorded in the in-focus coordinate recording unit 41 at the previous photographing.”) of an immersion objective (1) (immersion objective lens 10b) of an image-creating optical system (2) (microscope system 1), the method (100) comprising:
imaging an object (4) (page 3 third paragraph: “the sample S is imaged by the CCD camera unit 14”) using a reference objective (3) of the image-creating optical system (2) (e.g. page 7 fifth paragraph “when the dry system objective lens 10a is used”) and the immersion objective (1) (e.g. page 7 sixth paragraph “when the immersion objective lens 10b is used”) without [full] immersion (101, 110, 120) (page 8 second and third paragraphs “As illustrated in FIG. 10, when the immersion medium is insufficient… the lack of the immersion medium can be detected by detecting the change of the in-focus coordinates.”); and
ascertaining offset values for an offset between the reference objective (3) and the immersion objective (1) with immersion based on image representations of the object (4) (103, 131, 141) (page 9 second paragraph “The immersion medium filling determination unit 42 calculates a difference between the current in-focus coordinate Zn detected by the coordinate detection unit 25 and the in-focus coordinate Zn−1 recorded in the in-focus coordinate recording unit 41 at the previous photographing.” This is not only an offset relative to the immersion objective focus position when sufficient immersion fluid is present, but also an offset relative to the dry objective, see page 7 third and last paragraphs “FIG. 8 is a diagram illustrating an in-focus state of the dry system objective lens. FIG. 9 is a diagram illustrating an in-focus state of the immersion objective lens. Here, it is assumed that the dry objective lens 10a illustrated in FIG. 8 and the immersion objective lens 10b illustrated in FIG. 9 have the same focal length… As illustrated in FIGS. 8 and 9, the drying objective lens 10 a and the immersion objective lens 10 b have different in-focus positions in the optical axis direction by the thickness t of the glass dish 3. When the immersion objective lens 10b is switched, the in-focus coordinates change by the thickness t.”).”.
However, Tetsuya fails to teach “imaging an object using… the immersion objective without immersion.” Moreover, Tetsuya is designed to warn the user of insufficient immersive fluid such that it can be replenished. Thus, the method of Tetsuya teaches away from ever reaching the state where there is no immersion fluid between the immersion objective and the specimen unit while the immersion objective is in use.
Note that the IDS documents Boecker DE 1020005035546 and Moller et al. US 2012/0008193 A1, likewise fail to teach “imaging an object using… the immersion objective without immersion.”
Claims 2-18 depend from claim 1 and are allowed for at least the reason stated above.
Regarding claim 21, Tetsuya teaches “an image-creating optical system (2) (microscope system 1) having an immersion objective (1) (immersion objective lens 10b) and a reference objective (3) (dry system objective lens 10a) to carry out a method (100), comprising:
imaging an object (4) (page 3 third paragraph: “the sample S is imaged by the CCD camera unit 14”) using the reference objective (3) of the image-creating optical system (2) (e.g. page 7 fifth paragraph “when the dry system objective lens 10a is used”) and the immersion objective (1) (e.g. page 7 sixth paragraph “when the immersion objective lens 10b is used”) without [full] immersion (101, 110, 120) (page 8 second and third paragraphs “As illustrated in FIG. 10, when the immersion medium is insufficient… the lack of the immersion medium can be detected by detecting the change of the in-focus coordinates.”); and
ascertaining offset values for an offset (e.g. page 9 second paragraph “The immersion medium filling determination unit 42 calculates a difference between the current in-focus coordinate Zn detected by the coordinate detection unit 25 and the in-focus coordinate Zn−1 recorded in the in-focus coordinate recording unit 41 at the previous photographing.”) between the reference objective (3) and the immersion objective (1) with immersion based on image representations of the object (4) (103, 131, 141) (page 9 second paragraph “The immersion medium filling determination unit 42 calculates a difference between the current in-focus coordinate Zn detected by the coordinate detection unit 25 and the in-focus coordinate Zn−1 recorded in the in-focus coordinate recording unit 41 at the previous photographing.” This is not only an offset relative to the immersion objective focus position when sufficient immersion fluid is present, but also an offset relative to the dry objective, see page 7 third and last paragraphs “FIG. 8 is a diagram illustrating an in-focus state of the dry system objective lens. FIG. 9 is a diagram illustrating an in-focus state of the immersion objective lens. Here, it is assumed that the dry objective lens 10a illustrated in FIG. 8 and the immersion objective lens 10b illustrated in FIG. 9 have the same focal length… As illustrated in FIGS. 8 and 9, the drying objective lens 10 a and the immersion objective lens 10 b have different in-focus positions in the optical axis direction by the thickness t of the glass dish 3. When the immersion objective lens 10b is switched, the in-focus coordinates change by the thickness t.”).”.
However, Tetsuya fails to teach “imaging an object using… the immersion objective without immersion.” Moreover, Tetsuya is designed to warn the user of insufficient immersive fluid such that it can be replenished. Thus, the method of Tetsuya teaches away from ever reaching the state where there is no immersion fluid between the immersion objective and the specimen unit while the immersion objective is in use.
Note that the IDS documents Boecker DE 1020005035546 and Moller et al. US 2012/0008193 A1, likewise fail to teach “imaging an object using… the immersion objective without immersion.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Trapp et al. US 4,208,101 “Immersion Objective For A Microscope” teaches determining the appropriate shifts of the microscope for immersion mediums of differing refractive index. Similar to Tetsuya, Trapp fails to teach the absence of an immersion medium during observation with the immersion objective.
Toshimitsu et al. US 6,133,561 A “Electric Revolver And Electric Microscope” teaches a microscope having both dry and immersion objectives where the parfocal data is stored.
Olson et al. US 2019/0101723 A1 “REAL-TIME AUTOFOCUS FOCUSING ALGORITHM” teaches correcting the parfocal point using a tilted auto-focusing sensor.
JP H09189849 A “FOCUS DETECTION DEVICE FOR MICROSCOPE” teaches how the parfocal adjustment varies as a function of wavelength.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARA E RAKOWSKI whose telephone number is (571)272-4206. The examiner can normally be reached 9AM-4PM ET M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky L Mack can be reached at 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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/CARA E RAKOWSKI/Primary Examiner, Art Unit 2872
1 Claim 20 is rejected over Tetsuya assuming that claim 20 depends from claim 19, rather than claim 18 as written.
