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 .
Applicant(s) Response to Official Action
The response filed on 07/15/2026 has been entered and made of record.
Response to Arguments/Amendments
Presented arguments have been fully considered, but some are rendered moot in view of the new ground(s) of rejection necessitated by amendment(s) initiated by the applicant(s).
Claim Rejections - 35 USC § 103
Summary of Arguments:
Regarding claims 1, 3-9, the Applicant argues:
“Kaplan does not disclose or suggest the aperture as recited in claim 1 as amended. Kaplan discloses a laser marking system in which the aperture is provided for "focusing laser energy from the laser energy source, through said aperture onto a cut gemstone." Kaplan, paragraph [0068]. The laser beam in Kaplan passes through the aperture from above to mark the gemstone, not for bottom illumination to pass through the stage from below. Kaplan does not disclose or suggest an aperture defined by an adjustable iris in a stage in which a bottom EM radiation source directs bottom EM radiation toward the material sample through the aperture, as recited in claim 1 as amended.” [Remarks: Page 7]
“Stanescu and Katzlinger fail to cure this deficiency. Stanescu discloses an aperture in an objective lens attachment cap. Specifically, Stanescu teaches that "[t]he top 16 is provided with a contact surface 17 surrounding an aperture 18. The aperture 18 is aligned with the objective lens when the cap 14 is fitted to the objective lens housing 3." Stanescu, paragraph [0084]. Like Kaplan, Stanescu does not disclose or suggest an aperture defined by an adjustable iris in a stage in which a bottom EM radiation source directs bottom EM radiation toward the material sample through the aperture, as recited in claim 1 as amended.” [Remarks: Page 7]
“The other cited reference, Katzlinger, discloses an adjustable iris mounted on the luminescence detector housing at the optical input end, on the same side of the sample as the detector. Katzlinger teaches that "the luminescence detector 908 may include an adjustable iris (or 7 of iris assembly) 924 mounted to the detector housing 916 at the distal (optical input) end." Katzlinger, paragraph [0093]. Katzlinger's iris controls light entering the detector. The iris of Katzlinger does not teach or suggest the adjustable iris in a stage in which a bottom EM radiation source directs bottom EM radiation toward the material sample through the aperture, as recited in claim 1 as amended.” [Remarks: Pages 7-8]
“In view of the above, the cited references, alone or in combination, fail to disclose or suggest the elements of claim 1, as amended. Claim 1 is thus allowable. Claim 2 has been canceled, renders its rejection moot. Claims 3-9 are allowable at least by virtue of their dependence from claim 1.” [Remarks: Page 8]
Examiner’s Response:
Regarding claims 1, 3-9, the Examiner contends:
(i.-iv.) Presented arguments have been fully considered, but some are rendered moot in view of the new ground(s) of rejection with additional mappings below, as well as the new 35 U.S.C. 112(b) rejection that renders the claim indefinite.
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 1, 3-9 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation “… an objective lens positioned above the stage which collects at least a portion of the diffuse EM radiation and the bottom EM radiation from the material sample and forms a magnified image of at least a portion of the material sample; an image capture device that generates digital image data of the magnified image; and a reflective surface positioned to receive the collected EM radiation via the objective lens and to reflect the EM radiation laterally to form the magnified image …” (emphasis added to accentuate lack of clarity).
The claim states that the objective lens “forms a magnified image of at least a portion of the material sample”. Later, states the reflective surface acts to “reflect the EM radiation laterally to form the magnified image”. This creates a contradiction or ambiguity. Is the objective lens forming the image, or is the reflective surface forming the image? If the reflection is a part of the formation process (e.g., the lens starts it, and the reflection completes the optical path), the claim is currently confusing. If the lens forms the image prior to the reflection, the reflective surface cannot also “form” the image. Further, the phrase “and to reflect the EM radiation laterally” further creates a lack of clarity, since “EM radiation” has been modified to include both diffuse and bottom EM radiation, which became the “collected EM radiation”.
For the purposes of examination, the limitation is interpreted as the following:
“… an objective lens positioned above the stage which collects at least a portion of the diffuse EM radiation and the bottom EM radiation from the material sample and directs the collected EM radiation toward a reflective surface; the reflective surface positioned to receive the collected EM radiation from the objective lens and to reflect the collected EM radiation laterally to direct the reflected EM radiation toward the image capture device to form the magnified image; an image capture device that generates digital image data of the magnified image;
Claim Rejections - 35 USC § 103
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, 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.
Claims 1, 3-4, 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kaplan et al., hereinafter referred to as Kaplan (US 2008/0043220 A1) in view of Stanescu et al., hereinafter referred to as Stanescu (US 2019/0293916 A1).
As per claim 1, Kaplan discloses an imaging system (Kaplan: Abstract.), comprising:
a stage for supporting a material sample, the stage comprising an aperture (Kaplan: Para. [0012] discloses “The workpiece [claimed material sample] is mounted on a translatable stage”; Kaplan: Paras. [0068], [0072] disclose a cut gemstone workpiece mounting system, having an aperture.);
a top electromagnetic (EM) radiation source that directs diffuse EM radiation downwardly toward the material sample supported by the stage (Kaplan: Para. [0101] discloses “top illumination … An LED 20 or array of LEDs [claimed top electromagnetic (EM) radiation source] having emission at about 650 nm projects through a collimating lens 21 to produce a collimated illumination beam 22 … onto the workpiece 11 [claimed material sample]”; Kaplan: Para. [0102] discloses “A set of spaced 650 nm LEDs 30 produce illumination 31 at angles generally converging from the top toward the workpiece 11”.);
a bottom EM radiation source that directs bottom EM radiation toward the material sample through the aperture (Kaplan: Para. [0103] discloses “The bottom illumination system, shown in Fig. 4 includes a set of spaced miniature arc lamps 40 [claimed bottom EM radiation source] below the workpiece 11 [claimed material sample], producing illumination along paths 41 which are upwardly converging”; Kaplan: Para. [0068] discloses “a cut gemstone mounting system, having an aperture”.);
an objective lens positioned above the stage which collects at least a portion of the diffuse EM radiation and the bottom EM radiation from the material sample and forms a magnified image of at least a portion of the material sample (Kaplan: Para. [0100]-[0101] disclose “a ten-times [claimed forms a magnified image] microscope objective 10 [claimed objective lens] … focuses the beam onto the workpiece 11 … workpiece 11 [claimed material sample] reflects a portion of the illumination beam back through the microscope objective 10 [claimed which collects at least a portion of the diffuse EM radiation] … the resulting magnification of the image 29” and Kaplan: Para. [0103] discloses “a set of spaced miniature arc lamps 40 [claimed bottom EM radiation source] below the workpiece 11 [claimed material sample] … producing illumination along paths 41 [claimed bottom EM radiation] … toward the workpiece 11 [through the aperture disclosed in Para. 0072].”);
an image capture device that generates digital image data of the magnified image (Kaplan: Para. [0101] discloses “The workpiece 11 reflects a portion of the illumination beam back through the microscope objective 10 [claimed objective lens] and through the dichroic mirror 8, onto the reflecting mirror 24 [claimed reflective surface] … toward a top CCD camera 28. Thus, the top CCD camera 28 views the workpiece 11 … the resulting magnification of the image 29 [claimed magnified image] is about 200 times”.); and
a reflective surface positioned to receive the collected EM radiation via the objective lens and to reflect the EM radiation laterally to form the magnified image (Kaplan: Para. [0101] discloses “The workpiece 11 reflects a portion of the illumination beam back through the microscope objective 10 [claimed objective lens] and through the dichroic mirror 8, onto the reflecting mirror 24 [claimed reflective surface] … toward a top CCD camera 28. Thus, the top CCD camera 28 views the workpiece 11 … the resulting magnification of the image 29 [claimed magnified image] is about 200 times”.),
However, Kaplan does not explicitly disclose “… wherein the aperture is defined by an adjustable iris …”.
Further, Katzlinger is in the same field of endeavor and teaches wherein the aperture is defined by an adjustable iris (Katzlinger: Para. [0093] discloses “the luminescence detector 908 may include an adjustable iris (or iris assembly) 924 mounted to the detector housing 916 at the distal (optical input) end. The adjustable iris 924 may have any configuration suitable for adjusting the numerical aperture of the luminescence detector 908, and thus the range of angles over which the luminescence detector 908 can receive the luminescent light 206 emitted from the sample 16”.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, and having the teachings of Kaplan and Katzlinger before him or her, to modify the optical inspection system of Kaplan to include the adjustable iris feature as described in Katzlinger. The motivation for doing so would have been to improve sample analysis by providing a configuration that enables the potential for maximizing the amount of light received from the target sample.
As per claim 3, Kaplan-Katzlinger disclose the system of claim 1, wherein the top EM radiation source includes an annular EM radiation source comprising an annularly-shaped light emitting diode (LED) or an annular arrangement of multiple LEDs (Kaplan: Para. [0102] discloses “A set of spaced 650nm LEDs 30 [claimed top EM radiation source] produce illumination 31 at angles generally converging from the top toward the workpiece 11”; Kaplan: Para. [0154] discloses “three groups of LEDs 30 [claimed annular arrangement of multiple LEDs] are provided around the microscope objective 10, illuminating the workpiece 11”.).
As per claim 4, Kaplan-Katzlinger disclose the system of claim 3, wherein the objective lens is at least partially encircled by the annular EM radiation source (Kaplan: Para. [0154] discloses “three groups of LEDs 30 [claimed annular EM radiation source] are provided around the microscope objective 10 [wherein the LEDs being provided around the objective lens discloses the objective lens is at least partially encircled]”.).
As per claim 6, Kaplan-Katzlinger disclose the system of claim 1, wherein the material sample comprises a gemstone and the aperture is sized to receive a portion of the gemstone for supporting the gemstone in a selected position (Kaplan: Para. [0012] discloses “a workpiece [claimed material sample], such as a diamond gemstone”; Para. [0152] discloses “The diamond center sits in a concave depression [claimed aperture] suited to the diamond size [sized to receive a portion of the gemstone]”; Kaplan: Para. [0157] discloses “the concave cup 108 which supports the center of the diamond [gemstone] … and assures correct positioning [selected position] with respect to the laser beam”.).
As per claim 7, Kaplan-Katzlinger disclose the system of claim 1, wherein the stage includes one or more stage motors configured to move the stage in one or more directions (Kaplan: Para. [0093] discloses “XYZ motion stages 50 [claimed stage] … including … DC brushless motors [claimed stage motors]”; Kaplan: Para. [0026] discloses “The stage is generally translatable along three axes, X, Y, and Z [claimed move the stage in one or more directions]”.).
As per claim 8, Kaplan-Katzlinger disclose the system of claim 1, wherein the stage includes one or more tilt stage motors configured to tilt the stage about one or more axes (Kaplan: Para. [0093] discloses “motion stages 50 … including … DC brushless motors [claimed one or more tilt stage motors]”; Kaplan: Para. [0026] discloses “The stage … may also include other axes, e.g., rotational axes [configured to tilt the stage about one or more axes]”).
As per claim 9, Kaplan-Katzlinger disclose the system of claim 1, further comprising a directional top-side EM source adjacent to the top EM source (Kaplan: Para. [0154] discloses “The laser axis, for example, is illuminated with a red LED 20 [claimed top EM source]... three groups of LEDs 30 [claimed directional top-side EM source] are provided around the microscope objective 10 [claimed adjacent to the top EM source]”),
the top-side EM source configured to illuminate the material sample from a side angle (Kaplan: Para. [0102] discloses “A set of spaced 650 nm LEDs 30 produce illumination 31 at angles generally converging from the top toward the workpiece 11”; Kaplan: Para. [0163] discloses “illuminating the workpiece 11 [claimed material sample] from three sides [claimed from a side angle]”).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kaplan in view of Katzlinger in further view of Pawlik hereinafter referred to as Pawlik (US 2013/0087699 A1).
As per claim 5, Kaplan-Katzlinger disclose the system of claim 1, wherein the top EM radiation source comprises one or more light emitting diodes (LEDs) capable of emitting light across a first spectrum and the bottom EM radiation source (Kaplan: Para. [0101] discloses “top illumination … An LED 20 or array of LEDs [claimed top EM radiation source comprises one or more light emitting diodes (LEDs)] having emission at about 650 nm [claimed capable of emitting light across a first spectrum]” and Kaplan: Para. [0103] discloses “bottom illumination system [claimed bottom EM radiation source]”.).
However, Kaplan-Katzlinger do not explicitly disclose “… the bottom EM radiation source includes one or more LEDs capable of emitting light across a second spectrum that is different from the first spectrum.”.
Further, Pawlik is in the same field of endeavor and teaches the bottom EM radiation source includes one or more LEDs capable of emitting light across a second spectrum that is different from the first spectrum (Pawlik: Para. [0026] discloses “Light emitting diodes … are suitable light sources [claimed includes one or more LEDs]”; Pawlik: Para. [0030] discloses “light sources 102 and 103 emit light at the wavelengths λex1 and λex2, respectively [claimed capable of emitting light across a second spectrum that is different from the first spectrum]”.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, and having the teachings of Kaplan-Katzlinger and Pawlik before him or her, to modify the optical inspection system of Kaplan-Katzlinger to include the multi-wavelength LED illumination sources feature as described in Pawlik. The motivation for doing so would have been to improve sample analysis by providing a configuration that varies contrast for distinct analytical imaging of the sample.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and can be viewed in the list of references.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 PEET DHILLON whose telephone number is (571)270-5647. The examiner can normally be reached M-F: 5am-1:30pm. 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, Sath V. Perungavoor can be reached at 571-272-7455. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PEET DHILLON/Primary Examiner
Art Unit: 2488
Date: 09-03-2026
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