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 .
Election/Restrictions
In response to the Election/Restriction mailed to applicant on 09/11/2025, applicant has made an election of Invention I without traverse in the reply of 11/24/2025.
As a result of applicant’s election, claims 1-2, 5-6, 8-9, 12, 16 and 18-19 are examined in the present office action, and claims 3-4, 7, 10-11, 13-15, 17 and 20 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention.
Applicant should note that the non-elected claims 3-4, 7, 10-11, 13-15, 17 and 20 will be rejoined if the linking claim 1 is later found as an allowable claim.
Drawings
The drawings contain fourteen sheets of figures 1A-1D and 2-11 were received on 07/15/2025. These drawings are approved by the examiner.
Specification
The lengthy 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 applicant may become aware in the specification.
Claim Objections
Claims 1-2, 5-6, 8-9, 12, 16 and 18-19 are objected to because of the following informalities. Appropriate correction is required.
a) In claim 1: the use of terms “said” and “the” to refer to a previously feature/element throughout the claim is not consistent. For instance, while the claim uses term “said” to refer to a sample, an imaging module and an objective lens, see the claim on lines 3, 5 and 8; however, the claim also uses term “the” to refer/mention to same feature/element, see the claim on lines 9, 11 and 13. It is suggested that applicant uses just one term, i.e., “the” or “said” to refer to a previously feature/element for the purpose of maintain a consistence in claimed language being used.
In case that applicant accepts the mentioned suggestion, applicant should be amend all dependent claims to maintain the clamed language throughout all pending claims.
b) The remaining claims are dependent upon the objected base claim and thus inherit the deficiency thereof.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 5-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a) Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “said imaging module is a confocal microscope” (line 1).
The mentioned feature makes the claim indefinite because it is unclear how an imaging module having a movable objective lens and one or more sensors, see its base claim 1 on lines 3-14, can be a confocal microscope. In other words, the claim is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are element(s)/mechanism(s) used to constitute a microscope which has a confocal function(s)/result(s).
b) Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reason as set forth in element a) above.
Double Patenting
9. 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.
10. Claims 1-2, 5-6, 8-9, 12, 16 and 18-19, as best as understood, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-7, 9, 12, 16 and 18-19 of copending Application No. 19/270,264. Although the claims at issue are not identical, they are not patentably distinct from each other because all features recited in present claims 1-2, 5-6, 8-9, 12, 16 and 18-19 are read from features recited in the claims of the copending application No. 19/270,264, hereafter, App. ‘264.
a) the features recited in present claims 1 and 8 are read from features recited in claims 1 and 7 of the App. ‘264. It is noted that the claim 1 of the App. ‘264 recites that the objective lens is moving with a velocity of at least 0.5 µm s-1 and the claim 7 of the App. ‘264 recites that the sample has a thickness of at least 100 µm, thus the series of images to be captured by the imaging module is at least 200 images which is inside the range as claimed in present claims 1 and 8;
b) the features recited in present claims 2 and 5-6 are read from features recited in claims 2 and 5-6 of the App. ‘264, respectively; and
c) the features recited in present claims 9, 12, 16 and 18-19 are read from features recited in claims 9, 12, 16 and 18-19 of the App. ‘264, respectively
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
11. 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.
12. 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.
13. Claims 1-2, 5, 8-9, 12, 16 and 18, as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zeng et al (US Publication No. 2022/0015638).
Zend et al discloses an apparatus such as a reflective confocal microscope and a method for obtaining a three-dimensional of a volumetric sample.
a) Regarding present claims 1-2, 5, 8-9, 12, 16 and 18, the reflective confocal microscope and the method of using such a confocal microscope for obtaining the three-dimensional of a volumetric sample as described in paragraphs [0114]-[0156] and shown in fig. 1 comprises the following features:
a1) a light source system having a laser (12) and optics such as polarizers (13B), half-wave plates (15), prisms (16), lenses (19-20) and scanner (18) for guiding a collimating light beam (14) to illuminate a volumetric sample (S) which has a size of 200 µm x 200 µm x 3.2 µm, see paragraph [0218[, [0223[, … for example;
a2) an imaging module having an objective lens (25) and optics for detecting and guiding light from the sample to a plurality of detectors (30A, 30B) which optics comprises lenses (27), dichroic elements (29), filters (28, 31), … wherein the imaging module creates a three-dimensional images of the sample;
a3) the objective lens (25) movable along an illuminating axis of the collimating light beam with respect to the sample to adjust the distance between the objective lens and the different object planes within the sample, see paragraphs [0134]-[0135] and fig. 1;
a4) the imaging module acquires a series of images in different adjacent object planes of the volume with the movement of the objective lens and extracts signals from the series of images for processing a displaying under operations provided by an imager processor (36) wherein the series of images is larger than 25 as recited in each of claims 1 and 8;
a5) regarding the time of extracting signals, as stated in paragraph [0154], each xz plane image is acquired in about 10 ms or less which is inside the range of 120 seconds as recited in each of claims 1 and 9.
a6) regarding present claim 12, the imaging module images a region within the sample multiple times, i.e., a region defined by a x area wherein the vertical of the x area, i.e., along a z direction or adjacent object planes, are imaged with the movement of the objective lens (25); and
a7) regarding present claim 16, images acquired from adjacent object planes or frames defines a video, see paragraphs [0150], [0165], [0166], …, for example.
The method steps/limitations are implicitly met by the structure limitations.
Claim Rejections - 35 USC § 103
14. 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.
15. Claims 6 and 19, as best as understood, are rejected under 35 U.S.C. 103 as being unpatentable over Zeng et al in view of Choi et al (US Publication No. 2012/0049087).
It is noted that while Zeng et al discloses a reflective confocal l=microscope and a method for use the reflective confocal microscope for generating 3D images of a sample; however, Zeng et al does not positively disclose that the microscope is a kind of light sheet microscope as recited in present claim 6 and the step of acquiring the series of images having a rate satisfying a particular range as recited in present claim 19.
Regarding the feature of an imaging module in the form of a light sheet microscope, it is
noted that the claim does not recite any specific feature regarding the light sheet microscope
and the use of a reflective confocal microscope with light sheet illumination/detection for
illuminating and detecting a 3D tissues and creating images of such 3D tissues is known to one
skill in the art as can be seen in a scanning/confocal microscope provided by Choi et al, see
paragraphs [0078]-[0082] and [0120]-[0122]. It is noted that the use of light sheet microscope
with light illuminate biological samples such as tissues and imaging the 3D sample with millions
of voxels as disclosed by Choi et al, see paragraph [0006], for example. Thus, it would have
been obvious to one skill in the art before the effective filing date of the invention to modify
the reflective confocal microscope provided by Zeng et al by using a light sheet illumination to
Illuminate the 3D sample wherein the image processor generates a series
of images with rate of millions of voxels as suggested by Choi et al to meet a particular
application
Conclusion
16. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
17. The US Publication No. 2023/0037670 is cited as of interest in that it discloses an image acquisition device for imaging a volumetric object.
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872