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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-27 are pending.
Claims 2-17 and 19-27 are objected to.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/3/2025 has been considered by the examiner.
Drawings
The drawings were received on 13 March 2025. These drawings are accepted.
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.
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Claims 1 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 15-17 of copending Application No. 19/078,446 (reference application, all citations are to the amended claims filed 5/26/2025) (published as US 2025/0291165). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, the reference application claims a multimodal microscope (see claim 1, line 1), comprising:
a light source for transmitting excitation light (see claim 1, line 2),
an illumination beam path with a microscope objective for guiding the excitation light onto and/or into a sample to be examined (see claim 1, lines 3-4),
a detector for detecting detection light emitted by the sample owing to illumination with the excitation light (see claim 1, lines 5-6),
a detection beam path, comprising the microscope objective or a further microscope objection, for guiding the detection light onto the detector (see claim 1, lines 7-8),
in the illumination beam path a first spatial light modulator being arranged in or near a pupil plane of the illumination beam path (see claim 1, lines 10-11) and a second spatial light modulator being arranged in or near an intermediate image plane of the illumination beam path downstream of the pupil plane (see claim 2, lines 3-5),
a controller at least for controlling the first spatial light modulator and the second spatial light modulator, said controller being configured to control the first spatial light modulator and/or the second spatial light modulator for realizing an illumination mode for the sample (see claim 1, lines 13-15 and claim 2, lines 6-7),
wherein the controller is configured to control the second spatial light modulator outside a desired illumination region for representing a grating, the period of which is chosen such that excitation light of the +1st and/or of the -1st order of diffraction lies in at least one pupil plane outside a region through which there is propagation as far as the sample (see claim 3).
Regarding claim 18, the reference application claims a method for microscopy (see claim 15, line 1), the method comprising:
guiding excitation light onto and/or into a sample to be examined, via an illumination beam path with a microscope objective (see claim 15, lines 2-3),
guiding detection light emitted by the sample owing to illumination with the excitation light onto a detector via the microscope objective or a further microscope objective (see claim 15, lines 4-6),
detecting the detection light by said detector (see claim 15, line 7),
the excitation light is guided via a first spatial light modulator arranged in or near a pupil plane of the illumination beam path (see claim 15, lines 8-9) and subsequently via a second spatial light modulator arranged in or near an intermediate image plane of the illumination beam path downstream of the pupil plane (see claim 16), and the excitation light is modulated by the first and/or second spatial light modulator for realizing an illumination mode for the sample (see claim 15, lines 10-11 and claim 16),
wherein the second spatial light modulator is controlled outside a desired illumination region for representing a grating, the period of which is chosen such that light of the +1st and/or -1st order of diffraction lies in at least one pupil plane outside a region through which there is propagation as far as the sample (see claim 17).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 2-17 and 19-27 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
US 2023/0266246 to Siebenmorgen et al. is considered the closest prior art to the claimed invention. Siebenmorgen discloses a microscope comprising a first spatial light modulator arranged in a pupil plane or the illumination beam path and a second spatial light modulator arranged in an intermediate image plane of the illumination beam path downstream of the pupil plane (see at least Fig. 9 and paragraph [0138]).
However, Siebenmorgen fails to teach or suggest that a controller is configured to control the second spatial light modulator outside a desired illumination region for representing a grating, the period of which is chosen such that excitation light of the +1st and/or of the -1st order of diffraction lies in at least one pupil plane outside a region through which there is propagation as far as the sample.
Claims 2-7 and 19-27 are objected to because they are not rejected in the double patenting rejections stated above and because the prior art fails to teach or suggest that a controller is configured to control the second spatial light modulator outside a desired illumination region for representing a grating, the period of which is chosen such that excitation light of the +1st and/or of the -1st order of diffraction lies in at least one pupil plane outside a region through which there is propagation as far as the sample, as generally set forth in independent claims 1 and 18, from which claims 2-7 and 19-27 depend.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM W BOOHER whose telephone number is (571)270-0573. The examiner can normally be reached M - F: 8:00am - 4:00pm.
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/A.W.B./ Examiner, Art Unit 2872
/STEPHONE B ALLEN/ Supervisory Patent Examiner, Art Unit 2872
