DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
1- This office action is a response to an application filed on 5/28/2025, in which claims 1-10 are currently pending. The Application is a Continuation of 18368621 , filed 09/15/2023, now abandoned.18368621 is a Continuation of 15931995 , filed 05/14/2020 ,now U.S. Patent # 11808929. 15931995 is a Continuation of PCT/JP2017/040991, filed 11/14/2017
Information Disclosure Statement
2- The submitted information disclosure statement(s) (IDS) is(are) in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is(are) being considered by the examiner.
Specification
3- The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which application may become aware in the specification.
Drawings
4- The drawings were received on 5/28/2025. These drawings are acceptable.
Claim Interpretation - 35 USC § 112
5- 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.
6- 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:
illumination optical system in claim 6,
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 § 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 (MPEP 706.02(m)).
7- 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.
In addition, the functional recitation in the claims (e.g. "configured to" or "adapted to" or the like) that does not limit a claim limitation to a particular structure does not limit the scope of the claim. It has been held that the recitation that an element is "adapted to", "configured to", "designed to", or "operable to" perform a function is not a positive limitation but only requires the ability to so perform and may not constitute a limitation in a patentable sense. In re Hutchinson, 69 USPQ 139. (See MPEP 2111.04); see also In In re Giannelli, 739 F.3d 1375, 1378, 109 USPQ2d 1333, 1336 (Fed. Cir. 2014).
Also, it should be noted that it has been held that a recitation with respect to the manner in which a claimed device is intended to be employed does not differentiate the claimed device from a prior art apparatus satisfying the claimed structural limitations Ex-parte Masham 2 USPQ2d 1647 1987).
The claimed system in the instant application is capable of performing the claimed functionality, as is the prior art used in the present office action. The Examiner notes that where the patent office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart and sfiligoj, 169 USPQ 226 (C.C.P.A. 1971).
8- Claims 1-3, 5-8 and 10 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Nakasho et al. (PGPUB No. 2015/0185460)
As to Claims 6/1, 10/5, Nakasho discloses an image generating device and its method of use (Abstract and Figs. 10-25, with the system in Fig. 21 is taken as an example), comprising: an illumination optical system (laser light source 51) that irradiates illumination light upon an object (S); an objective lens (since no clear position/usage for this lens is claimed, it can be associated to any of ojective 9, lens 53, lens 72 or any combination thereof); a detector (74/75) that detects light from the object due to the irradiation of the illumination light from the illumination optical system (Fig. 21, ¶ 64-65, 99-101, 182-183 for ex.); and
a processor (20/25) configured to:
adjust a position of a focal point of the objective lens so that the focal point of the objective lens is disposed at a plurality of positions that are mutually separated by gaps Dz along an optical axis of the objective lens; generate sets of light intensity distribution data corresponding to each of the plurality of positions based on the detected light; generate phase distribution data or a quantitative phase image based on the light intensity distribution data (adjusted by means of driving mechanism 22 in combination with driving mechanisms 21, 23, and 24; ¶ 107, also see 63-64, 69. The phase generation renders the depth information of the sample i.e. 3D distribution based on the information measured at the deviated z positions; ¶ 183 in view of ¶ 64-65, 79, 80, 88);
and generate at least one image among calculated phase contrast image, calculated differential interference image, calculated contrast observation image, and calculated dark field image based on the phase distribution data or the quantitative phase image and the light intensity distribution data (¶ 51, 58-59, 181, 188, 199 for ex.), wherein the processor sets the gaps Dz based on setting information of a microscope, and the setting information includes at least one information among a numerical aperture NA of the objective lens, a wavelength l of the illumination light, and a refractive index n between the objective lens and the object; (Claims 10/5) wherein the setting information includes the numerical aperture NA of the objective lens, the wavelength X of the illumination light, and the refractive index n between the objective lens and the object (¶ 63, 72, 90, 101, 129, 213).
(Claims 7/2) wherein the phase distribution data or the quantitative phase image is generated by applying an intensity transport equation to the light intensity distribution data (¶ 7-8, 55-58 for ex.).
(Claims 8/3) wherein the processor sets the gaps Dz using a parameter k that represents a spatial frequency for restoration of phase in the quantitative phase image (¶ 63, 72, 90, 101).
Claim Rejections - 35 USC § 103
9- 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
10- Claims 4, 9 are rejected under AIA 35 U.S.C. 103 as being unpatentable over in view of Young (I.T. Young, R. Zagers, L.J. van Vliet, J. Mullikin, F. Boddeke, H. Netten, Depth-of-Focus in microscopy, in: SCIA'93, Proc. of the 8th Scandinavian Conference on Image Analysis, Tromso, Norway, 1993, 493-498; cited by Applicants)
As to claims 9/4, Nakasho discloses image generating device according to claim 8 and the method of use thereof according to claim 3,
Nakasho is silent regarding, wherein: the gap Z is set according to a following Equation (100), using the parameter k:
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a value of the parameter k is 1 or greater and 25 or less.
Nakasho discloses that the gap distance Z should be larger than the depth of focus (¶ 78). Young discloses the use of a similar formula, where k=5/4=1.25, i.e. k is 1 or greater and 25 or less for the purpose of obtaining an accurate description of the depth-of-focus for the type of high numerical aperture lenses that are typically used in microscopy (Section 1, 2ⁿᵈ para) as formulas commonly used are not correct when dealing with objectives having a high numerical aperture and to give the values of z that are observed in practice and that agrees with objective measurements made using a variety of lenses and wavelengths (page 2 2ⁿᵈ para).
Therefore, it would have been obvious to someone with ordinary skill in the art before the effective filling date of the invention to have the gap Dz is set according to the following Equation, using the parameter k:
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a value of the parameter k is 1 or greater and 25 or less, where k=5/4=1.25, with the advantage of obtaining an accurate description of the depth-of-focus for the type of high numerical aperture lenses that are typically used in microscopy as formulas commonly used are not correct when dealing with objectives having a high numerical aperture and to give the values of Dz that are observed in practice and that agree with the objective measurements made using a variety of lenses and wavelengths.
Relevant Prior art
US 11808929, US 10690898 appear relevant to the use scanning microscopy with varying focusing points.
US 20200271910, US 10690898 appear to teach most the elements of the claimed apparatus and its method of use but fail to anticipate/obviate the claimed invention as a whole.
Conclusion
The examiner has pointed out particular references contained in the prior art of record in the body of this action 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. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED K AMARA whose telephone number is (571)272-7847. The examiner can normally be reached on Monday-Friday: 9:00-17:00
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached on (571-272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohamed K AMARA/
Primary Examiner, Art Unit 2877
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