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 .
Claim Objections
Claims 41 and 96 are objected to because of the following informalities: the claims are dependent on claims 39 and 94, respectively, and recite “the first and second optical collection components”. There is no antecedent basis for the term. Antecedent basis exists in claims 40 and 95, respectively. It is suggested to amend the claims to depend on claims 40 and 95, respectively. Appropriate correction is required.
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.
Claim 38 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of U.S. Patent No. 12,366,517. Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations in the pending claim are found patented claims.
Regarding claim 38, U.S. Patent No. 12,366,517 claims a system (claim 1, col. 47, line 2) comprising:
a light source (claim 6, col. 47, line 41); and
a light detection system comprising (claim 1, col. 47, line 2):
first and second light receivers in fixed positions relative to each other, wherein the first and second light receivers are configured to receive first and second beams of light, respectively (lines 3-6);
a plurality of wavelength separators configured to pass light from the first and second light receivers having a predetermined spectral range (lines 7-9); and
a plurality of light detection modules, wherein each light detection module is in optical communication with a wavelength separator and comprises a plurality of photodetectors (lines 10-14).
Claims 38-44, 47, 48, 52, 58, 59, 62, 73, 74, and 93-97 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-14 of U.S. Patent No. 12,366,517 in view of Oostman et al. (US 2003/0048539 A1), hereinafter “Oostman”. The pending claims are rendered obvious by the Patented claims in view of Oostman.
Regarding claim 38, U.S. Patent No. 12,366,517 claims a system (claim 1, col. 47, line 2) comprising:
a light detection system comprising (claim 1, col. 47, line 2):
first and second light receivers in fixed positions relative to each other, wherein the first and second light receivers are configured to receive first and second beams of light, respectively (lines 3-6);
a plurality of wavelength separators configured to pass light from the first and second light receivers having a predetermined spectral range (lines 7-9); and
a plurality of light detection modules, wherein each light detection module is in optical communication with a wavelength separator and comprises a plurality of photodetectors (lines 10-14).
U.S. Patent No. 12,366,517 claim 1 does not claim a light source.
However, Oostman teaches a flow cytometry system (abstract, Fig. 4) including a light source (ref 85, paragraph [0027]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to claim a light source in order to provide light to analyze the sample.
Regarding claim 39, U.S. Patent No. 12,366,517 claims wherein the first and second light receivers each comprise a coupler for operably attaching an optical collection component (claim 2).
Regarding claim 40, U.S. Patent No. 12,366,517 claims 40 further comprising first and second optical collection components operably attached to the couplers for propagating light to the first and second light receivers, respectively (claim 3).
Regarding claim 41, U.S. Patent No. 12,366,517 claims wherein the first and second optical collection components comprise fiber optics (claim 4).
Regarding claim 42, U.S. Patent No. 12,366,517 claims wherein the first and second optical collection components comprise fiber optic relay bundles (claim 5).
Regarding claim 43, U.S. Patent No. 12,366,517 claims wherein the first and second light receivers each comprise a beam adjuster (claim 7).
Regarding claim 44, U.S. Patent No. 12,366,517 claims wherein the beam adjuster is a lens (claim 8).
Regarding claim 47, U.S. Patent No. 12,366,517 claims wherein the wavelength separators are configured to convey light between each other (claim 9).
Regarding claim 48, U.S. Patent No. 12,366,517 claims wherein the wavelength separators are comprised of dichroic mirrors (claim 10).
Regarding claim 52, U.S. Patent No. 12,366,517 claims wherein the first beam of light is conveyed by a first subset of wavelength separators and the second beam of light is conveyed by a second subset of wavelength separators (claim 11).
Regarding claim 58, U.S. Patent No. 12,366,517 claims wherein each wavelength separator comprises an adjustment mechanism configured to fine-tune the position of the wavelength separator (claim 12).
Regarding claim 59, U.S. Patent No. 12,366,517 claims wherein the adjustment mechanism is configured to fine-tune the position of the wavelength separator by rotating around a dowel pin (claim 13).
Regarding claim 62, U.S. Patent No. 12,366,517 claims wherein the distance separating adjacent wavelength separators in the plurality of wavelength separators is constant (claim 14).
Regarding claim 73, U.S. Patent No. 12,366,517 does not claim wherein the system is a particle analyzer.
However, Oostman teaches wherein the system is a particle analyzer (paragraph [0027]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to claim wherein the system is a particle analyzer in order to perform phase resolved fluorescent analysis, paragraph [0003].
Regarding claim 74, U.S. Patent No. 12,366,517 does not claim wherein the system is a flow cytometer.
However, Oostman teaches wherein the system is a flow cytometer (paragraph [0027]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to claim wherein the system is a flow cytometer in order to perform phase resolved fluorescent analysis, paragraph [0003].
Regarding claim 93, U.S. Patent No. 12,366,517 claims a light detection system comprising (claim 1, col. 47, line 2):
first and second light receivers in fixed positions relative to each other, wherein the first and second light receivers are configured to receive first and second beams of light, respectively (lines 3-6);
a plurality of wavelength separators configured to pass light from the first and second light receivers having a predetermined spectral range (lines 7-9); and
a plurality of light detection modules, wherein each light detection module is in optical communication with a wavelength separator and comprises a plurality of photodetectors (lines 10-14).
U.S. Patent No. 12,366,517 does not claim a method of analyzing a sample, the method comprising: (a) introducing a sample into a system comprising: a light source; and (b) flow cytometrically analyzing the sample.
However, Oostman teaches a method of analyzing a sample (paragraph [0027]), the method comprising: (a) introducing a sample (paragraph [0029]) into a system comprising: a light source (Fig. 4, ref 85; paragraph [0027]); and (b) flow cytometrically analyzing the sample (paragraph [0027]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to claim a method of analyzing a sample, the method comprising: (a) introducing a sample into a system comprising: a light source; and (b) flow cytometrically analyzing the sample in order to perform phase resolved fluorescent analysis, paragraph [0003].
Regarding claim 94, U.S. Patent No. 12,366,517 claims wherein the first and second light receivers each comprise a coupler for operably attaching an optical collection component (claim 2).
Regarding claim 95, U.S. Patent No. 12,366,517 claims wherein the system further comprises first and second optical collection components operably attached to the couplers for propagating light to the first and second light receivers, respectively (claim 3).
Regarding claim 96, U.S. Patent No. 12,366,517 claims wherein the first and second optical collection components comprise fiber optics (claim 4).
Regarding claim 97, U.S. Patent No. 12,366,517 claims wherein the first and second optical collection components comprise fiber optic relay bundles (claim 5).
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 (i.e., changing from AIA to pre-AIA ) 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 38-44, 47, 48, 52, 62, 73, 74, and 93-97 are rejected under 35 U.S.C. 102(a)(1),(a)(2) as being anticipated by Oostman et al. (US 2003/0048539 A1), hereinafter “Oostman”.
Regarding claim 38, Oostman discloses a system (abstract, Fig. 4) comprising:
a light source (refs 85, 87, 89, paragraph [0027]); and
a light detection system (refs 123, 125, 127, 129, paragraphs [0029]) comprising:
first and second light receivers in fixed positions relative to each other, wherein the first and second light receivers are configured to receive first and second beams of light, respectively (refs 123, 125, 127, 129, paragraph [0029], movable holder 121 holds the light receivers/fibers in in fixed positions relative to each other, only moving relative to the collector 111);
a plurality of wavelength separators configured to pass light from the first and second light receivers having a predetermined spectral range (Fig. 5, refs 161, 171, 181, 191, 201, paragraphs [0031]-[0032]); and
a plurality of light detection modules, wherein each light detection module is in optical communication with a wavelength separator and comprises a plurality of photodetectors (Figs. 4, 5; refs 124, 126, 128, 130 are each detector clusters (the claimed plurality of light detection modules), and each cluster has multiple detectors (the claimed photodetectors), paragraphs [0009], [0030]-[0031] and the Figs show that light travels from fiber 123 to detector cluster 124 to an array of detectors, to a dichroic beam-splitter cascade, to multiple PMTs and from fiber 125 to detector cluster 126 to an array of detectors, to a dichroic beam-splitter cascade, to multiple PMTs. “Each array of detectors differentially separates bands of light by filtering, using coatings on beam splitters and lenses, in a known manner. With each cluster having between 3-4 and 10 or more detectors”, paragraph [0030].).
Regarding claim 39, Oostman discloses wherein the first and second light receivers each comprise a coupler for operably attaching an optical collection component (paragraph [0029]).
Regarding claim 40, Oostman discloses first and second optical collection components operably attached to the couplers for propagating light to the first and second light receivers, respectively (paragraph [0029]).
Regarding claim 41, Oostman discloses wherein the first and second optical collection components comprise fiber optics (paragraph [0029]).
Regarding claim 42, Oostman discloses wherein the first and second optical collection components comprise fiber optic relay bundles (paragraph [0016]).
Regarding claim 43, Oostman discloses wherein the first and second light receivers each comprise a beam adjuster (Fig. 5, ref 145, paragraph [0031]).
Regarding claim 44, Oostman discloses wherein the beam adjuster is a lens (Fig. 5, ref 145, paragraph [0031]).
Regarding claim 47, Oostman discloses wherein the wavelength separators are configured to convey light between each other (refs 153, 151, 161, paragraph [0031]).
Regarding claim 48, Oostman discloses wherein the wavelength separators are comprised of dichroic mirrors (ref 151, paragraph [0031]).
Regarding claim 52, Oostman discloses wherein the first beam of light is conveyed by a first subset of wavelength separators and the second beam of light is conveyed by a second subset of wavelength separators (as shown in Fig. 5, first beam to beam splitter ref 161, second beam to beam splitter ref 171, paragraph [0032]).
Regarding claim 62, Oostman discloses wherein the distance separating adjacent wavelength separators in the plurality of wavelength separators is constant (as shown in Fig. 6).
Regarding claim 73, Oostman discloses wherein the system is a particle analyzer (paragraph [0027]).
Regarding claim 74, Oostman discloses wherein the system is a flow cytometer (paragraph [0027]).
Regarding claim 93, Oostman discloses a method of analyzing a sample (abstract, Fig. 4), the method comprising:
(a) introducing a sample (Fig. 4, ref 103, paragraph [0027]) into a system (Fig. 4) comprising:
a light source (refs 85, 87, 89, paragraph [0027]); and
a light detection system (refs 123, 125, 127, 129, paragraphs [0029]) comprising:
first and second light receivers in fixed positions relative to each other, wherein the first and second light receivers are configured to receive first and second beams of light, respectively (refs 123, 125, 127, 129, paragraph [0029], movable holder 121 holds the light receivers/fibers in in fixed positions relative to each other, only moving relative to the collector 111);
a plurality of wavelength separators configured to pass light from the first and second light receivers having a predetermined spectral range (Fig. 5, refs 161, 171, 181, 191, 201, paragraphs [0031]-[0032], Each individual dichroic beam-splitter is interpreted as a wavelength separator); and
a plurality of light detection modules, wherein each light detection module is in optical communication with a wavelength separator and comprises a plurality of photodetectors (Figs. 4, 5; refs 124, 126, 128, 130 are each detector clusters (the claimed plurality of light detection modules), and each cluster has multiple detectors (the claimed photodetectors), paragraphs [0009], [0030]-[0031] and the Figs show that light travels from fiber 123 to detector cluster 124 to an array of detectors, to a dichroic beam-splitter cascade, to multiple PMTs and from fiber 125 to detector cluster 126 to an array of detectors, to a dichroic beam-splitter cascade, to multiple PMTs. “Each array of detectors differentially separates bands of light by filtering, using coatings on beam splitters and lenses, in a known manner. With each cluster having between 3-4 and 10 or more detectors”, paragraph [0030].).
(b) flow cytometrically analyzing the sample (paragraph [0027]).
Regarding claim 94, Oostman discloses wherein the first and second light receivers each comprise a coupler for operably attaching an optical collection component (paragraph [0029]).
Regarding claim 95, Oostman discloses wherein the system further comprises first and second optical collection components operably attached to the couplers for propagating light to the first and second light receivers, respectively (paragraph [0029]).
Regarding claim 96, Oostman discloses wherein the first and second optical collection components comprise fiber optics (paragraph [0029]).
Regarding claim 97, Oostman discloses wherein the first and second optical collection components comprise fiber optic relay bundles (paragraph [0016]).
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
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.
Claim 58 is rejected under 35 U.S.C. 103 as being unpatentable over Oostman, as applied to claim 38 above, and further in view of Rowlen et al. (US 2017/0198782 A1), hereinafter “Rowlen”.
Regarding claim 58, Oostman is silent regarding wherein each wavelength separator comprises an adjustment mechanism configured to fine-tune the position of the wavelength separator.
However, Rowlen teaches a flow cytometer system (abstract) including wherein each wavelength separator comprises an adjustment mechanism configured to fine-tune the position of the wavelength separator (paragraph [0059])
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Oostman with the teaching of Rowlen by including wherein each wavelength separator comprises an adjustment mechanism configured to fine-tune the position of the wavelength separator in order to align the beam.
Claim 59 is rejected under 35 U.S.C. 103 as being unpatentable over Oostman and Rowlen, as applied to claims 38 and 58 above, and further in view of Rao et al. (US 2005/0046856 A1), hereinafter “Rao”.
Regarding claim 59, Oostman is silent regarding wherein the adjustment mechanism is configured to fine-tune the position of the wavelength separator by rotating around a dowel pin.
However, Rao teaches an optical device (abstract) including wherein the adjustment mechanism is configured to fine-tune the position of the wavelength separator by rotating around a dowel pin (paragraph [0100]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Oostman with the teaching of Rao by including wherein the adjustment mechanism is configured to fine-tune the position of the wavelength separator by rotating around a dowel pin in order to precisely align the mirror.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Knapp (US20180136041A1) teaches a dichroic mirror array and fibers in fixed positions relative to each other and could be combined with Oostman to render the independent claims obvious.
Sharpe (US20210080368A1) teaches an optical system with a detection module that comprises a plurality of photodetectors and could be combined with Oostman to render the independent claims obvious.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC J BOLOGNA whose telephone number is (571)272-9282. The examiner can normally be reached Monday - Friday 7:30am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara E Geisel can be reached at (571) 272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC J BOLOGNA/Primary Examiner, Art Unit 2877
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