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 .
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).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11,415,515 of U.S. Patent No. 11,686,681. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent anticipates or makes obvious the claimed invention.
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.
Claim 11 is 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 11 recites the limitation "the image sensor" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 3-5, 7, 9, 10, 13, 14, 16, 17, 19, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by D1 (US 20090311734 A1).
With regards to claims 1 and 16, D1 discloses a fluorescent microscopy system and method comprising:
a stage comprising a cell or tissue and a position encoder configured to generate a signal corresponding to the position of the stage [0025, 0028];
a sensor array [0031-0034]; and
an optical system configured to direct a light emission from said cell or tissue to the sensor array [0038], thereby generating a charge that transfers across the sensor array, wherein the transfer of the charge is triggered by the signal generated by the position encoder [0039-0040].
With regards to claim 3, D1 discloses further comprising a light source configured to direct an excitation beam onto the cell or tissue [0019, 0038].
With regards to claim 4, D1 discloses wherein the excitation beam is configured to excite a fluorophore associated with a biomolecule [0034].
With regards to claim 5, D1 discloses further comprising a dichroic optical element configured to separate multiple fluorescent emissions [0038, 0046].
With regards to claim 7, D1 discloses wherein the dichroic optical element is a dichroic beamsplitter [0038, 0046].
With regards to claim 9, D1 discloses wherein the position encoder is configured to emit a signal at intervals corresponding to discrete positional increments of the stage [0039].
With regards to claim 10, D1 discloses wherein the position encoder is configured to emit signals at intervals corresponding to Cartesian coordinates of the stage [0025, 0026, 0039].
With regards to claim 13, D1 discloses wherein the stage is configured to move at a stage speed of about 1 mm/second to about 50 mm/second [0028, 0047].
With regards to claim 14, D1 discloses wherein the position encoder generates signals in real-time corresponding to deviations in the stage speed [0039, 0042].
With regards to claim 17, D1 discloses wherein the cell or tissue comprises a plurality of nucleic acid molecules, wherein the excitation beam excites a fluorophore associated with each nucleic acid molecule (Claims 2 and 8).
With regards to claim 19, D1 discloses further comprising storing a data representation of an image of said sample in a computer readable memory [0026, 0029].
With regards to claim 20, D1 discloses it was known to sample breast tissue [0022].
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over D1 in view of D2 (US 8158926 B2).
With regards to claims 2 and 18, D1 discloses directing first and second fluorescence emissions to different areas of a TDI CCD, with charge transfer triggered by the encoder [0038-0040]. D1 does not teach directing the second fluorescent emission to a physically separate second sensor array. D2 teaches an imaging system and method wherein sensors may be TDI line scan sensors and that each sensor group may operate in TDI mode and that TDI pixel shifting is synchronized with the encoder output of the Y stage [00088-0090]. It would have been well known, obvious, and predictably suitable to one with ordinary skill in the art to modify D1 with the teachings of D2 to provide parallel multispectral detection and improved spectral separation while maintaining encoder synchronized charge transfer.
Claims 6, 8, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over D1 in view of D3 (US 20040021868 A1).
With regards to claim 6, D1 does not specify wherein the dichroic optical element is a dichroic wedge. However, D3 teaches an imaging system and teaches dichroic wedges were already known in the art [0109, 0114]. It would have been well known, obvious, and predictably suitable to one with ordinary skill in the art to substitute the dichroic optical element taught by D1 with the known dichroic wedge taught by D3 to obtain a compact spectral separation element since the modification would have involved the predictable use of a known optical element for its established function.
With regards to claim 8, D1 does not teach wherein the cell or tissue comprises a first biomolecule and a second biomolecule, wherein each biomolecule generates a distinct light emission with a different spectral profile. However, D3 teaches cells containing differently colored genetic probes directed to different biomolecular targets [0121]. It would have been well known, obvious, and predictably suitable to one with ordinary skill in the art to modify D1 with the claimed configuration to detect and distinguish multiple biomolecular targets within the same cell and to permit simultaneous identification of the targets based on their different spectral profiles.
With regards to claim 12, D1 does not teach wherein the dichroic optical element separates fluorescent emissions into spatially distinct emission paths corresponding to individual sensor arrays. D3 teaches such a configuration was already known [0123-0126] (Figs. 25-28). It would have been well known, obvious, and predictably suitable to one with ordinary skill in the art to modify D1 with the claimed limitations as taught by D3 to improve optical efficiency, focus, and wavelength specific detector performance.
Claims 11 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over D1 in view of D4 (US 20140104468 A1).
With regards to claim 11, D1 does not teach wherein the charge transfer is triggered after a predetermined number of signals are received by the image sensor. D4 teaches an imaging system comprising a processor and trigger generator that receive encoder derived position information and generate triggers initiating shifts of charge across the focal plane array (Claims 4-7). It would have been well known, obvious, and predictably suitable to one with ordinary skill in the art to implement D1’s selectable encoder pulse counter [0039-0040] in D4’s configuration to that the sensor control system could initiate charge transfer after receiving a predetermined number of encoder signal to provide configurable synchronization for different magnifications and pixel to stage relationships.
With regards to claim 15, D1 does not teach a processor configured to use the signal generated by the position encoder to coordinate charge transfer across the sensor array with translation of the stage. D4 teaches a processor configured to perform TDI integration, a position monitoring arrangement, and a trigger generator configured to initiate charge shifts so that movement of an image across a focal plane array is synchronized with the charge shifts (claims 4-7). It would have been well known, obvious, and predictably suitable to one with ordinary skill in the art to modify D1 with the claimed limitations to provide precise, programmable coordination, and accommodate variations in stage motion.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCUS H TANINGCO whose telephone number is (571)272-1848. The examiner can normally be reached Monday-Friday 9am-6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uzma Alam can be reached on 571-272-3995. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCUS H TANINGCO/Primary Examiner, Art Unit 2884
