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 6/16/2025, in which claims 35-55 are currently pending. The Application
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 6/16/2025. 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 system, image capture system in claims 51, 53-55.
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 35, 38-42, 51-52 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Guo et al. (PGPUB No. 2014/0168651).
As to claims 51/35, 52, Guo teaches a system, and its method of use, for capturing an image of a sample (Abstract, Fig. 2-18), the system comprising: a reflected light microscope (¶ 28-31, 41, claim 8 for ex.; biological sample) including a sample holder and (claim 52) further comprising the sample holder (42/44) mounting location (Figs. 2-16, 18); an illumination system (150 and source of illumination 14 or incident light) configured to illuminate the sample located on an upper surface of a sample holder with first incident light having a first illumination spectrum directed towards the upper surface of the sample holder, when the sample holder is located at the sample holder mounting location of the reflected light microscope (Figs. 2-7, 18), and wherein the sample holder comprises: a substrate (42); and a plasmonic layer comprising a periodic array of sub-micron structures comprising an array of separated plasmonic regions supported by the substrate such that the plasmonic layer is located between the substrate and the sample (Figs. 2-16, 18, Abstract, ¶ 30-33 for ex.); and an image capture system (56, 162 or 210) configured to capture a first image of received first return light corresponding to a reflection of the first incident light by the sample holder, wherein the first return light corresponds to the first incident light modified due to an interaction between the first incident light and the plasmonic layer of the sample holder, wherein the first return light comprises a reflection spectrum having a spatial variation in color dependent upon localized variations in dielectric constant of the sample and the plasmonic layer (Figs. 2-16, 18; ¶ for ex.; transmitted or reflected diffracted lights by the plasmonic grating show different orders or peaks within the orders, i.e. return lights with spatial and spectral dispersion, see Figs. 15-16 for ex.)
(claim 38) further comprising: capturing a digital image of the first return light (using ccd camera Fig. 9, 15, ¶ 37-41, 56-59, 68-71 for ex.)
(claim 39) wherein: the sub-micron structures are arranged in a periodic array with a separation between the sub-micron structures in at least a first direction in the range of 200 nm to 500 nm (¶ 54, 62); and/or the sub-micron structures have a largest dimension in the range of 50 nm to 300 nm; and/or wherein the plasmonic layer has a thickness in the range of 20 nm to 300 nm (¶ 54, 62).
(claim 40) wherein the sub-micron structures are islands of plasmonic material separated by gaps (Figs. 3A, 6).
(claim 41) wherein the sample holder includes an optically clear protective layer located on an opposite side of the plasmonic layer to the substrate (¶ 54; a resist layer is used on top of the patterned gold film before the removal of the e-beam resits) to isolate the plasmonic layer ( a mere intended use temporarily true during the making of the plasmonic layer).
(claim 42) further comprising: applying the sample to the upper surface of the sample holder before illuminating the sample with the first incident light (¶ 42-44).
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 36-37 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Guo in view of Stark et al. (PGPUB No. 2008/0099667)
As to claims 36-37, Guo teaches the method of claim 35.
Guo does not teach expressly wherein the sample is a slide of biological tissue; wherein the biological tissue is not stained and/or labelled before illumination with the first incident light; and/or wherein the biological tissue is substantially transparent, even though one PHOSITA would find it obvious to measure such transparent tissues as the sample on the plasmonic layer since Guo suggests measuring biological agents/traces (Abstract, 3, 38, 41-42 for ex.), i.e. commonly found in tissue samples.
Moreover, in a similar field of endeavor, Stark teaches methods and apparatuses using plasmonic techniques (Abstract and Figs. 1-36, 52-68 for ex.) wherein the sample is a slide of biological tissue; wherein the biological tissue is not stained and/or labelled before illumination with the first incident light; and/or wherein the biological tissue is substantially transparent (¶ 186-187).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus of Guo in view of Stark’s suggestions so that the sample is a slide of biological tissue; wherein the biological tissue is not stained and/or labelled before illumination with the first incident light; and/or wherein the biological tissue is substantially transparent, with the advantage of effectively measuring and characterizing biological tissues.
11- Claims 43-50, 53-55 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Guo in view of Kellis et al. (PGPUB No. 20060127278)
As to claims 43-50, 53-55, Guo teaches the method of claim 35 and the system of claim 51.
Moreover, Guo teaches further comprising: illuminating the sample with second incident light having a second illumination spectrum directed towards the upper surface of the sample holder (¶ 56; a broadband light source with multiple wavelengths is used).
Guo does not teach expressly wherein the second illumination spectrum is selected to cause fluorescence by the sample; and receiving second return light corresponding to fluorescence of the sample due to the second incident light; (claim 44) further comprising: forming a first image of the first return light; and forming a second image of the second return light; (claims 45/54) wherein the first image is formed in a first time period, and the second image is formed in a second time period, wherein the sample and sample holder are illuminated by the first incident light and not the second incident light during the first time period, and wherein the sample and sample holder are illuminated by the second incident light and not the first incident light during the second time period; (claim 46/55) wherein the first image and the second image are formed simultaneously; (claim 47) further comprising: spatially correlating the first image and the second image with respect to the location of the sample; (claim 48) wherein the first image and the second image are spatially correlated and combined optically; and generating a combined digital image by combining the spatially correlated first image and second image; (Claim 49) wherein the first illumination spectrum and the second illumination spectrum are the same; (claim 50) wherein the first illumination spectrum and the second illumination spectrum are the different; (claim 53) wherein: the illumination system is configured to illuminate the sample with second incident light having a second illumination spectrum directed towards the upper surface of the sample holder, wherein the second illumination spectrum is selected to cause fluorescence by the sample; and the image capture system is configured to capture an image of the received second return light corresponding to fluorescence of the sample due to the second incident light.
However, in a similar field of endeavor, Kellis teaches systems and methods of measuring biological molecular interactions (Abstract and Figs. 1-20) wherein simultaneously measuring surface plasmon resonance and surface plasmon enhanced fluorescence are measured during a molecular interaction (¶ 50); further comprising: forming a first image of the first return light; and forming a second image of the second return light (Fig. 2; ¶ 91-92 for ex); wherein the first image is formed in a first time period, and the second image is formed in a second time period, wherein the sample and sample holder are illuminated by the first incident light and not the second incident light during the first time period, and wherein the sample and sample holder are illuminated by the second incident light and not the first incident light during the second time period (¶ 50; the two measurements can be performed independently and one PHOSITA would find it obvious to adjust the illumination spectrum and timing to achieve the goal); further comprising: spatially correlating the first image and the second image with respect to the location of the sample; wherein the first image and the second image are spatially correlated and combined optically (¶ 36, 129) and one PHOSITA would find it obvious to generating a combined digital image by combining the spatially correlated first image and second image for a thorough representation of the spectral properties of the sample (See MPEP 2143 Sect. I. B-D); (Claim 49) wherein the first illumination spectrum and the second illumination spectrum are the same; (claim 50) wherein the first illumination spectrum and the second illumination spectrum are the different (¶ 88 for ex.)
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus of Guo in view of Kellis’ suggestions so that the second illumination spectrum is selected to cause fluorescence by the sample; and receiving second return light corresponding to fluorescence of the sample due to the second incident light; further comprising: forming a first image of the first return light; and forming a second image of the second return light; wherein the first image is formed in a first time period, and the second image is formed in a second time period, wherein the sample and sample holder are illuminated by the first incident light and not the second incident light during the first time period, and wherein the sample and sample holder are illuminated by the second incident light and not the first incident light during the second time period; wherein the first image and the second image are formed simultaneously; further comprising: spatially correlating the first image and the second image with respect to the location of the sample; wherein the first image and the second image are spatially correlated and combined optically; and generating a combined digital image by combining the spatially correlated first image and second image; wherein the first illumination spectrum and the second illumination spectrum are the same; wherein the first illumination spectrum and the second illumination spectrum are the different; wherein: the illumination system is configured to illuminate the sample with second incident light having a second illumination spectrum directed towards the upper surface of the sample holder, wherein the second illumination spectrum is selected to cause fluorescence by the sample; and the image capture system is configured to capture an image of the received second return light corresponding to fluorescence of the sample due to the second incident light, with the advantage of effectively and thoroughly measuring and characterizing biological tissues.
Relevant Prior art
US 20090210165, US 20130175457, US 20170122965 appear relevant to the use of measurements of fluorescence and plasmon resonance signals from biological samples.
US 20220091307, US 20160258114 appear to teach most the elements of the claimed apparatus and its method of use but fail 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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