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 05/22/25 has been acknowledged and considered. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a bright-field illumination module in claim 1 (figures 1-2 and paragraph [0047]: e.g., a second light source 7 for bright-field illumination and paragraph [0163]: e.g., a bright-field illumination module, comprising: a light source; a right-angle prism; an imager; a sample).
a fluorescent excitation illumination module in claim 1 (figures 1, 3, and paragraph [0047]: e.g., a first light source 6 for fluorescent excitation illumination and paragraph [0164]: e.g., a fluorescent excitation illumination module, comprising: a light source; a parabolic reflector; an excitation optical filter; an emission optical filter; an imager; a sample).
a non-coherent illumination module in claim 1 (figures 1, 4, and paragraph [0047]: e.g., a third light source 9 for non-coherent illumination and paragraph [0165]: e.g., a non-coherent illumination module, comprising: a light source; a light extraction plate; a light diffuser; an optical filter; an imager; a sample).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-17 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 1; these claims invokes 112(f) as discussed above. The claims provide for the "a bright-field illumination module, comprising a first light source and a right-angle prism" but in the specification does not show clearly the structures to perform the claimed inventions. While the paragraph [0047] of the specification in US 2025/0283817 discloses, figure 2, the "a first light source 6 for fluorescent excitation illumination, a second light source 7 for bright-field illumination, and a third light source 9 for non-coherent illumination", the specification fails to discloses structure that corresponds to these types of " a bright-field illumination module, comprising a first light source " as recited in claim 1. Therefore, there is no way to determine the metes and bounds of these limitations, since there are no limits imposed by structure, materials or acts, and can be performed by any means capable of performing the function, both known and unknown. Thus, the claims are rejected under 112 second paragraph because the claim scope is indefinite. For the purpose of examination, the limitation is rewritten or amended as “a bright-field illumination module, comprising a second light source”.
Regarding claims 1 and 8; these claims invokes 112(f) as discussed above. The claims provide for the "a fluorescent excitation illumination module, comprising: a second light …" but in the specification does not show clearly the structures to perform the claimed inventions. While the paragraph [0047] of the specification in US 2025/0283817 discloses, figure 3, the "a first light source 6 for fluorescent excitation illumination, a second light source 7 for bright-field illumination, and a third light source 9 for non-coherent illumination", the specification fails to discloses structure that corresponds to these types of "a fluorescent excitation illumination module, comprising: a second light source" as recited in claim 1. Therefore, there is no way to determine the metes and bounds of these limitations, since there are no limits imposed by structure, materials or acts, and can be performed by any means capable of performing the function, both known and unknown. Thus, the claims are rejected under 112 second paragraph because the claim scope is indefinite. For the purpose of examination, the limitation is rewritten or amended as “a fluorescent excitation illumination module, comprising: a first light source”.
Claim 5 recites the limitation "the first imager" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the distance" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the distance" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the second imager" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the optimized distance" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the distance" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the optimized distance" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the distance" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the optimized distance" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 in line 3; the limitation "the second imager" is unclear and vague. In the specification just only shown in paragraphs [0010]: e.g., a multi-mode illumination system, comprising an imager, a sample holder, a first illumination module, a second illumination module, and a third illumination module and [0047]: e.g., The multi-mode illumination system comprises an imager 1, a first optical filter 2, a sample holder 3 configured to receive a sample thereon, a second optical filter 4, a parabolic reflector 5, a first light source 6 for fluorescent excitation illumination, a second light source 7 for bright-field illumination. Thus, the claims are rejected under 112 second paragraph because the claim scope is indefinite. For the purpose of examination, the limitation is rewritten or amended as “imager” or “first imager”.
Claims, which are dependent from rejected claims inherit the problems of these claims, and are therefore also rejected under 35 U.S.C. 112, second paragraph.
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 1-3, 5-14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-48 of U.S. Patent No. 11,543,353. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-48 of U.S. Patent No. 11,543,353 are anticipated the claims 1-16 of claimed invention of the present invention.
Regarding claim 1; claim 1 in lines 1-32 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Regarding claim 2; claim 9 in lines 1-2 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Regarding claim 3; claim 13 in lines 1-3 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Regarding claim 5; claim 36 in lines 1-3 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Regarding claim 6; claim 38 in lines 1-4 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Regarding claim 7; claim 46 in lines 1-3 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Regarding claim 8; claim 8 in lines 1-4 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Regarding claim 9; claim 23 in lines 1-3 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Regarding claim 10; claim 23 in lines 1-3 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Regarding claim 11; claim 24 in lines 1-3 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Regarding claim 12; claim 24 in lines 1-3 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Regarding claim 13; claim 25 in lines 1-3 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Regarding claim 14; claim 39 in lines 1-4 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Regarding claim 16; claim 40 in lines 1-3 of U.S. Patent No. 11,543,353 discloses the all features of claimed invention.
Allowable Subject Matter
Claims 1-20 are would be allowable if filing a Terminer Disclaimer to overcome the rejection(s) under Double Patenting rejection, set forth in this Office action.
Claims 1-20 are would be allowable if rewritten or amended 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.
The following is a statement of reasons for the indication of allowable subject matter:
After completing a thorough search of independent claim 1 that the closest reference to Park et al (US2013/0201322) discloses, figures 1-5 and abstract, the fluorescent microscope 100 comprises a first optical module 110, a second optical module 120, and a third optical module 130. The first optical module 110 is configured to acquire a fluorescent image of the survey object C by using the first light source 111 and a first excitation filter 112, wherein the first light source 111 is configured to supply the first excitation light L1 having a first wavelength W1, and a blue solid state fluorescence light source, in particular, a light emitting diode (LED) is used. The second optical module 120 is configured to acquire an image of a survey object C by using a second light source 121 and a second excitation filter 122, wherein the second light source 121 may be a general mercury lamp. The third optical module 130 is configured to obtain a bright field image of a survey object C by using a third light source 131, wherein the third light source 131 for supplying third excitation light L3, and a fourth dichroic filter 132 disposed in a direction perpendicular to a disposition direction of the third dichroic filter 125, wherein the third light source 131 irradiates a white light to the survey object C (paragraphs [0057]-[0059], [0072]-[0073], and [0081]-[0082]. Moss et al (US Patent No. 6,341,876) discloses, figures 2, 7, 9 and abstract, an illumination system for illuminating a spatial light modulator, including a projection apparatus comprising a light source in the form of a sealed beam arc lamp 21, wherein the sealed beam arc lamp 21 comprises a sealed chamber filled with a gas, and the arc gap being positioned at the focal point of an essentially conic reflector 41. The illumination system includes an integrator rod to combine the outputs of two separate light sources 701, 703 in order to produce a higher intensity light beam than is possible from a single light source. Each light source as before suitably takes the form of a sealed beam arc lamp as figure 2 (col.4 lines 1-8 and col.7 lines 21-45). However, none of the searched prior arts alone or in combination discloses the claimed invention having the following recited limitations “a fluorescent excitation illumination module comprising a parabolic reflector, a non-coherent illumination module comprising a light extraction plate, and a light diffuser” of independent claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jang et al (US 2018/0158237) discloses a recognition device includes an illumination unit including a plurality of illumination modules respectively having different predetermined light receiving characteristics, each of the illumination modules receiving polarized light emitted from at least one lighting device according to one of the predetermined light receiving characteristics and measuring an illumination value.
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/SN/
August 20, 2026
/SANG H NGUYEN/ Primary Examiner, Art Unit 2877
