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 .
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.
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Claims 1 and 3-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,422,671 (hereinafter reference patent) in view of Winterot et al. (WO 2010/081678 A1 – hereinafter Winterot, references to machine translated copy attached) and and Betensky (US 5,485,313 A – hereinafter Betensky).
Regarding claim 1, claim 1 of reference patent recites each and every limitation recited in claim 1 except for “the optical zoom system is configured to render the telescope system telecentric contained over an entire magnification range with respect to both the object side and the image side.”
Winterot discloses an optical zoom system is configured to render a telescope system telecentric contained over an entire magnification range with respect to an object side (pages 3-4 - an optical zoom system is configured to render a telescope system telecentric contained over an entire magnification range with respect to an object side such that the fixed entrance pupil position allows for the object-side telecentricity of the microscope system).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the teachings of Winterot into the microscope recited in claim 1 of reference patent so that the image appears independent of the distance between the object and the lens (Winterot: page 2).
However, claim 1 of reference patent in view of Winterot does not recite the optical zoom system is configured to render the telescope system telecentric contained over an entire magnification range with respect to the image side.
Betensky discloses an optical zoom system is configured to render a telescope system telecentric contained over an entire magnification range with respect to an image side (column 1, line 62 – column 2, line 2).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the teachings of Betensky into the microscope recited in claim 1 in view of Winterot so that the image can be easily viewed by the user (Betensky: column 1, lines 62-64).
Regarding claim 3, claim 1 of reference patent recites “the telescope system comprises an objective arranged at the object side of the telescope system, wherein the control unit is configured to divide the image formed by the oblique plane microscope into three or more areas, wherein a first area comprises an image of a first region of the object and a second area comprises an image of a second region of the object, wherein the first region is located off of a focal plane of the objective on a first side facing away from the objective, and the second region is located off of the focal plane of the objective on a second side facing the objective,” which accommodate the limitations recited in claim 3.
Claims 4-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-8 of reference patent in view of Winterot and Betensky in view of claims 2-8 of reference patent reciting the same limitations.
Claim 11 is rejected for on the ground of nonstatutory double patenting as being unpatentable over claim 9 of reference patent in view of Winterot for a similar reason as discussed in claim 1 above.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of reference patent in view of Winterot and Betensky as applied to claims 1 and 3-11 above, and further in view of Uehara et al. (US 2008/0218714 A1 – hereinafter Uehara).
Regarding claim 2, see the discussion of claim 1 above. However, claim 1 of reference patent in view of Winterot and Betensky does not recite “the telescope system comprises an optical correction apparatus which is adjustable for correcting a spherical aberration of the optical imaging system, and wherein the control unit is configured to adjust the optical correction apparatus based on the evaluation of the image quality of the image.”
Uehara also discloses a telescope system comprises an optical correction apparatus which is adjustable for correcting a spherical aberration of the optical imaging system, and wherein the control unit is configured to adjust the optical correction apparatus based on the evaluation of the image quality of the image ([0148]-[0149]).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the teachings of Uehara into the microscope recited in claim 1 of reference patent in view of Winterot and Betensky in order to correct a spherical aberration of the optical imaging system, thus enhancing the quality of the image.
Claim Rejections - 35 USC § 103
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.
Claims 1-2, 8, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hillman (US 2019/0302437 A1 – hereinafter Hillman), Uehara, Winterot, and Betensky.
Regarding claim 1, Hillman discloses an oblique plane microscope, comprising: an optical imaging system configured to form an image of an object (Fig. 4; [0069]; [0077] – an optical imaging system configured to form an image of a sample on a tilted intermediate image plane), the optical imaging system comprising a telescope system with an optical zoom system, which is adjustable for adapting a magnification of the telescope system to a ratio between two refractive indices associated with an object side and an image side of the telescope system, respectively ([0042]; [0044]; [0046]; [0074]; [0076] – optical zoom system comprising movable lens, which is adjustable for adapting a magnification to a ratio between a refractive index of the sample immersion medium, which is on the side of the object, and a refractive index of the medium at the intermediate image planet, which is on the side of the telescope system); and a control unit (Fig. 4 – image processor/controller), wherein the optical zoom system is adjusted based on image quality of the image formed by the optical imaging system ([0074] – the optical zoom system is adjusted based on image quality to cancel out distortions).
However, Hillman does not explicitly disclose the control unit is configured to evaluate an image quality of the image formed by the optical imaging system and to adjust the optical zoom system based on the evaluation, wherein the optical zoom system is configured to render the telescope system telecentric contained over an entire magnification range with respect to both the object side and the image side.
Uehara discloses a control unit is configured to evaluate an image quality of an image formed by an optical imaging system and to adjust an optical zoom system based on the evaluation ([0148]-[0149]).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the teachings of Uehara into the control unit taught by Hillman in order to achieve accurate and/or precise adjustment.
Hillman and Uehara do not disclose the optical zoom system is configured to render the telescope system telecentric contained over an entire magnification range with respect to both the object side and the image side.
Winterot discloses an optical zoom system is configured to render a telescope system telecentric contained over an entire magnification range with respect to an object side (pages 3-4 - an optical zoom system is configured to render a telescope system telecentric contained over an entire magnification range with respect to an object side such that the fixed entrance pupil position allows for the object-side telecentricity of the microscope system).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the teachings of Winterot into the microscope taught by Hillman and Uehara so that the image appears independent of the distance between the object and the lens (Winterot: page 2).
However, Hillman, Uehara, and Winterot do not disclose the optical zoom system is configured to render the telescope system telecentric contained over an entire magnification range with respect to the image side.
Betensky discloses an optical zoom system is configured to render a telescope system telecentric contained over an entire magnification range with respect to an image side (column 1, line 62 – column 2, line 2).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the teachings of Betensky into the microscope taught by Hillman, Uehara, and Winterot so that the image can be easily viewed by the user (Betensky: column 1, lines 62-64).
Regarding claim 2, see the teachings of Hillman, Uehara, Winterot, and Betensky as discussed in claim 1 above. Uehara also discloses a telescope system comprises an optical correction apparatus which is adjustable for correcting a spherical aberration of the optical imaging system, and wherein the control unit is configured to adjust the optical correction apparatus based on the evaluation of the image quality of the image ([0148]-[0149]).
The motivation for incorporating the teachings of Uehara into the microscope has been discussed in claim 1 above.
Regarding claim 8, Hillman also discloses the magnification range of the telescope system corresponds to a range in which the ratio of the two refractive indices is between 1.0 and 1.6 ( [0040]; [0044] – at least 1.0).
Regarding claim 10, see the teachings of Hillman, Uehara, Winterot, and Betensky as discussed in claim 2 above. Uehara also discloses the control unit is configured to evaluate the image quality of the image formed by the optical imaging system, and to adjust the optical correction apparatus and the optical zoom system based on said evaluation in an iterative process ([0148]-[0149] – performed every Δt).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the further teachings of Uehara into the microscope proposed in claim 2 to always update the microscope with correct parameters.
Regarding claim 11, the limitations recited in claim 11 are accommodated by the scope of claim 1 thus are rejected by the same reason as discussed in claim 1 above.
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hillman, Uehara, Winterot, and Betensky as applied to claims 1-2, 8, and 10-11 above, and further in view of Almogy et al. (US 2020/0371329 A1 – hereinafter Almogy).
Regarding claim 3, see the teachings of Hillman, Uehara, Winterot, and Betensky as discussed in claim 1, in which Hillman also discloses the telescope system comprises an objective arranged at an object side of the telescope system (Fig. 4; [0067] – a first objective).
However, Hillman, Uehara, Winterot, and Betensky do not disclose the control unit is configured to divide the image formed by the oblique plane microscope into two or more areas, wherein a first area comprises an image of a first region and a second area comprises an image of a second region, wherein the first region and the second region of the object are positioned at different distances from the objective along its optical axis.
Almogy discloses a control unit is configured to divide the image formed by an oblique plane microscope into two or more areas, wherein a first area comprises an image of a first region and a second area comprises an image of a second region, wherein the first region and the second region of the object are positioned at different distances from the objective along its optical axis (Fig. 10B; [0317]).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the teachings of Almogy into the microscope taught by Hillman, Uehara, Winterot, and Betensky to acquire information about geometric properties of the object (Almogy: [0317]).
Regarding claim 4, see the teachings of Hillman, Uehara, Winterot, Betensky, and Almogy as discussed in claim 3 above, in which Almogy also discloses the control unit is configured to divide the image formed by the oblique plane microscope into three or more areas, wherein the first area comprises an image of the first region of the object, the first region being located on a first side of a focal plane of the objective facing away from objective (Fig. 10B; [0317] – region 835), wherein the second area comprises an image of the second region of the object, the second region being located on a second side of the focal plane facing the objective (Fig. 10B; [0317] – region 825), and wherein a third area comprises an image of a third region of the object, the third region being intersected by the focal plane (Fig. 10B; [0317] – the region in between).
The motivation for incorporating the teachings of Almogy into the microscope of Hillman, Uehara, Winterot, and Betensky has been discussed in claim 3 above.
Regarding claim 5, see the teachings of Hillman, Uehara, Winterot, Betensky, and Almogy as discussed in claim 4 above, in which Uehara also discloses the telescope system comprises an optical correction apparatus which is adjustable for correcting a spherical aberration of the optical imaging system, and wherein the control unit is configured to evaluate an image quality of the third area of the image and to adjust the optical correction apparatus based on the evaluation ([0148]-[0149] – evaluating an image quality of the whole image thus including the third area in view of Almogy’s teachings above).
The motivation for incorporating the teachings of Uehara into the microscope has been discussed in claim 1 above.
Regarding claim 6, see the teachings of Hillman, Uehara, Winterot, Betensky, and Almogy as discussed in claim 3 above, in which Uehara discloses the control unit is configured to evaluate an image quality of the first area, and/or the second area, and to adjust the optical zoom system apparatus based on the evaluation ([0148]-[0149] – evaluating an image quality of the whole image thus including the first and/or second area in view of Almogy’s teachings above).
The motivation for incorporating the teachings of Uehara into the microscope of has been discussed in claim 1 above.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hillman, Uehara, Winterot, and Betensky as applied to claims 1-2, 8, and 10-11 above, and further in view of Erlbacher et al. (US 2019/0049708 A1 – hereinafter Erlbacher).
Regarding claim 7, see the teachings of Hillman, Uehara, Winterot, and Betensky as discussed in claim 1. However, Hillman, Uehara, Winterot, and Betensky do not disclose the control unit is configured to evaluate the image quality by determining a Strehl ratio, a contrast value, an image sharpness measure and/or a width of an autocorrelation function of the image.
Erlbacher discloses a control unit is configured to evaluate image quality by determining a Strehl ratio, a contrast value, an image sharpness measure and/or a width of an autocorrelation function of an image ([0032]; [0038]-[0043]).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the teachings of Erlbacher into the microscope taught by Hillman, Uehara, Winterot, and Betensky to employ various techniques to determine the image quality thus making the microscope more robust.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hillman, Uehara, Winterot, and Betensky as applied to claims 1-2, 8, and 10-11 above, and further in view of Marks et al. (US 2008/0007733 A1 – hereinafter Marks).
Regarding claim 9, see the teachings of Hillman, Uehara, Winterot, and Betensky as discussed in claim 1. However, Hillman, Uehara, Winterot, and Betensky do not disclose the telescope system is formed by a Keplerian telescope comprising the optical zoom system.
Marks discloses a telescope system is formed by a Keplerian telescope comprising an optical zoom system ([0060]).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the teachings of Marks into the microscope taught by Hillman, Uehara, Winterot, and Betensky to minimize uncertainty in the scaling (Marks: [0060]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUNG Q DANG whose telephone number is (571)270-1116. The examiner can normally be reached IFT.
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/HUNG Q DANG/Primary Examiner, Art Unit 2484
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