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 .
Reissue Applications
This application seeks to reissue U.S. Patent No. 9,933,607 (“the ‘607 patent”). In a preliminary amendment filed with this application, claim 1 has been amended and claim 4 canceled. Claims 1-3 and 5-14 are pending.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 9,933,607 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Amendment to the Specification
The applicant has amended the specification to include a cross reference to the ‘607 patent and to incorporate by reference the contents thereof. This amendment is unnecessary and is not entered. Incorporating the contents of the patent is not needed, as all contents of the patent are already presented in this reissue application. In addition, a cross reference to related applications is only necessary in continuation or divisional reissue applications. See MPEP 1451.
Objection, 37 CFR 1.173 – Improper Amendment
This application is objected to for failing to conform with the requirements of 37 CFR 1.173(d), which states that “matter to be omitted by reissue must be enclosed in brackets.” Claim 1 has been amended to remove language using strikethrough. Correction is required.
Objection, 37 CFR 1.175 – Defective Declaration
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414.
The declaration states that the error upon which this reissue application is based is a “typographical error” in claim 1. A typographical error is not sufficient to support a reissue application. See MPEP 1402. In addition, the removal of the term “comprising” in claim 1 amounts to more than a typographical error, as this amendment affects the scope of the claim. Therefore the error that the applicant seeks to address has not been properly described in the declaration. Furthermore, it has not been described in the declaration how the term “comprising” renders the patent invalid.
Claim Rejections, 35 USC § 251 – Defective Declaration
Claims 1-3 and 5-14 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Rejections, 35 USC § 251 – Broadening After Two Years
Claims 1-3 and 5-14 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period.
A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Claim 1 has been amended to remove the term “comprising” after “a microscope objective.” This amended claim covers something that claim 1 of the ‘607 patent did not. The scope of the patent claim required that all elements listed after the “microscope objective” were a part of1 the “microscope objective.” Therefore, the patent claim required that the microscope objective included, or comprised, the turret, housing, sleeve, first and second plurality of lenses, carrier, and the integral motor2. By removing the term “comprising,” amended claim 1 in this reissue application no longer requires this. The claim now includes in its scope that these elements are not included as a part of the microscope objective. The filing of this reissue application exclusively to remove the term “comprising” implies this to be the intended scope of claim 1. Therefore the claim now covers something that the patent claim did not, and as such it has been broadened. Claims 2-3 and 5-14 depend from claim 1 and inherit this scope.
Claim Rejection, 35 USC § 251 – Original Patent
Claims 1-3 and 5-14 are rejected under §251 for violating the original patent requirement. “The reissue claims must be for the same invention as that disclosed as being the invention in the original patent, as required by 35 U.S.C. 251.” MPEP 1412.01 I. Claim 1 has been amended to no longer require that the microscope objective comprise claim elements such as the turret, housing, sleeve, first and second plurality of lenses, carrier, and integral motor. This is not “what the patentee objectively intended as the invention.” Id. The invention that is described in the specification only shows that the microscope objective includes these claim elements. A broader invention where these elements are separate from the objective is not envisioned.
Claim Rejection, 35 USC § 251 – New Matter
Claims 1-3 and 5-14 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is described in the §112(a) rejection below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 and 5-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As described in the §251 rejection above, the scope of amended claim 1 no longer requires that the microscope objective comprises the turret, housing, sleeve, first and second plurality of lenses, carrier, and integral motor. The scope of claim 1 now includes that these elements are a part of the broader imaging system, but does not require that they are included within the microscope objective. The “omission of a limitation can raise an issue regarding whether the inventor had possession of a broader, more generic invention.” MPEP 2163.05(I)(A). The specification only describes that these elements are a part of the microscope objective. See e.g. Fig. 4-5 and their description. The specification does not describe the broader invention that is now included within the scope of claim 1.
The “examiner must construe claim terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim.” MPEP 2111. The filing of this reissue application exclusively to remove the term “comprising” after the “microscope objective” implies that the above-described interpretation is the intended scope of claim 1.
Claim Rejections - 35 USC § 112
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.
Claims 1-3 and 5-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites an “inaccessible objective turret.” This language is indefinite. The specification does not define the term “inaccessible.” The following passages of the specification describe this language:
The presently disclosed embodiments may be implemented with a closed or user-inaccessible microscope objective. This is in contrast to manually adjustable microscope objectives that, for example, allow the user to manually adjust the setting of a rotatable collar. Such an implementation requires the user to have access to the objective turret. While such an approach is compatible with open frame microscopes, other microscopes have the objective turret housed within the body of the instrument, where the user would not be able to manually adjust the collar setting. Another approach involves an external mechanical actuator that couples to and displaces a collar on an objective with a manually adjustable collar. However, such an approach may introduce reliability issues due to misalignment of the interfaces between the collar and the mechanical actuator or slippage of the actuator. The disclosed techniques may be implemented in conjunction with closed or inaccessible objective turrets to facilitate remotely adjusting the SA setting without accessing the objective turret and without introducing reliability or alignment issues.
‘607 patent at 3:42-61. This passage does not make clear what the distinction would be between an accessible objective turret and an inaccessible objective turret. For instance, would every “objective turret housed within the body of the instrument” be inaccessible? The POSITA would appreciate that a user could access this type of objective turret by simply opening the instrument body. This would appear to make such an objective accessible, albeit requiring more effort for access than with open frame microscopes. Based on the claims and the specification, it cannot be determined what would and would not be considered an inaccessible objective turret. The scope of this limitation is therefore indefinite. “If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) … is appropriate.” MPEP 2173.02 II.
It is also not clear what the requirements are of a “closed-platform” objective turret. The specification includes no definition of this phrase, and the specific manner in which this term limits the claim cannot be determined.
Claims 1-3 and 5-14 are additionally rejected under §112(b). As described above, the scope of claim 1 no longer requires that the turret, housing, sleeve, first and second plurality of lenses, carrier, and integral motor are a part of the microscope objective. The specification only shows these elements as residing within the objective. See e.g. Fig. 4-5 and their description. It is not clear how these elements may be separate from the objective, which the scope of the claim apparently covers. Therefore whether these elements are included within the objective, or are separate therefrom, is not clear from the claim.
Claims 1-3 and 5-14 are additionally rejected under §112(b). Claim 1 includes the following language:
an integral motor coupled to the carrier and configured to move the carrier along the imaging axis in conjunction with the at least one closed-platform inaccessible objective turret to change a distance between each lens of the first plurality of lenses relative to at least one lens of the second plurality of lenses and thereby remotely adjust a spherical aberration (SA) setting of the microscope objective without direct user manipulation
The bolded language above does not place any structural limitation on claim 1. Instead, this language appears to describe the intended result of the motor being configured to change the distances between lenses. An apparatus claim containing language describing an intended result is indefinite because it “does not provide a clear cut indication of scope because it impose[s] no structural limits” on the claim. MPEP 2173.05(g).
Claims 1-3 and 5-14 are additionally rejected under §112(b). Claim 1 recites that the motor is configured to “move the carrier along the imaging axis in conjunction with the … turret.” This is indefinite. It is not clear if this language describes that the motor moves the both the carrier and the turret, which the “in conjunction with” language appears to require3. But this is not described in the specification of the ‘607 patent. Alternatively, it is not clear if this is intended to recite that the motor moves the carrier relative to the turret, which the specification appears to disclose. See e.g. ‘607 patent at 5:59-6:23.
Claim 3 is additionally rejected under §112(b). Claim 3 recites that “the housing is closed about the first plurality of lenses and the second plurality of lenses and the motor when the microscope objective is positioned within the imaging system.” This language is indefinite. It is not clear if claim 3 requires that the housing is only “closed about” the lenses “when the microscope objective is positioned within the imaging system.” If this is the case, it is not clear what additional structure is required by this language. Stated differently, does this require additional structure to enable opening the housing when the objective is not positioned within the imaging system? There is no discussion of this in the specification. Alternatively, if the housing is always closed about the lenses (which appears to be how the housing is described in the specification: see e.g. Fig. 4 and the discussion of “housing 50”), the language describing that the housing is closed “when microscope the objective is positioned within the imaging system” would not appear to be necessary. In this case, it is not clear what limitation, if any, this language adds to the claim.
Claim 8 recites “the first passageway.” There is insufficient antecedent basis for this term in the claim.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 5-9, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fahlbusch, US 20110082590.
Claim 1: Fahlbusch discloses an imaging system, comprising:
a microscope objective (Fig. 1);
at least one closed-platform inaccessible objective turret (Figures 1, 2, and 4 show a microscope objective turret. See ¶21. The elements within the objective turret are enclosed within the objective body (i.e., are “closed off from user manipulation.” See ‘607 patent specification at 5:56-58). This meets the BRI of the claim term “closed-platform.” In addition, Fahlbusch describes that the objective is “difficult to access.” Abs and ¶5. This meets the BRI of “inaccessible” when that term is understood in light of the specification, which provides limited guidance on the term’s interpretation. See the §112(b) rejection above for a discussion of why the language in this limitation is indefinite.);
a housing (Fig. 1);
a sleeve forming a passageway in housing (Fig. 2 shows a sleeve that is equivalent to the sleeve 76 in Fig. 5 of the ‘706 patent);
a first plurality of lenses positioned within the passageway on a sample end of the microscope objective (Plural lens groups, i.e., first and second plurality of lenses, are positioned within the passageway of the sleeve. Figures 1, 2, and 4, and ¶25.);
a second plurality of lenses positioned within the passageway and spaced apart from the first plurality of lenses and opposite the sample end such that the first plurality of lenses and the second plurality of lenses are aligned along an imaging axis and such that each individual lens is rotationally symmetrical about the imaging axis (Plural lens groups (i.e., a first and second plurality of lenses) are positioned within the passageway of the sleeve. Figures 1, 2, and 4, and ¶25. These lens groups are positioned and are symmetrical in the manner claimed);
a carrier coupled to the first plurality of lenses and positioned at least partially within the passageway (Adjusting ring 3 and lens holder 13 together form a carrier. ¶24 and Fig. 1-2. This assembly is coupled to the lens and to the motor to result in a movable element 2. Id. Because the holder and bushing are coupled to the lens that is inside the passageway, this carrier is positioned at least partially within the passageway.);
an integral motor (Fig. 1: 4) coupled to the carrier and configured to move the carrier along the imaging axis in conjunction with the at least one closed-platform inaccessible objective turret to change a distance between each lens of the first plurality of lenses relative to at least one lens of the second plurality of lenses (¶¶ 21-24) and thereby remotely adjust a spherical aberration (SA) setting of the microscope objective without direct user manipulation (This limitation expresses an intended result of a particular structure, and does not limit the claim. Even if limiting, this is taught by Fahlbusch: see Abstract and ¶6.); and
a processor coupled to the motor and configured to provide instructions to drive the motor (External control unit 14 and internal control unit 15 are coupled to, and provide instructions to drive, the motors. ¶¶ 25-27. Based on the language of the claim it is not clear if the processor is contained within the objective, or is external to it. Control units 14 and 15 meet either interpretation.).
Claim 2: Fahlbusch discloses that the motor is configured to move the carrier to displace each lens of first plurality of lenses the same distance relative to a starting position such that each respective lens of the first plurality of lenses is fixed in position relative to one another (Movable element 2 is a lens group. ¶21. This meets the requirements of this claim.).
Claim 3: Fahlbusch discloses that the housing is closed about the first plurality of lenses and the second plurality of lenses and the motor when the microscope objective is positioned within the imaging system (Figs. 1, 2, and 4 and their description show that the housing is closed about the lenses. See the §112(b) rejection above regarding this claim).
Claim 5: Fahlbusch discloses that the carrier is positioned in part within the sleeve and in part extending from a sample end of the sleeve (Fig. 2 shows that bushing 12, which is part of the carrier, is positioned partly within the sleeve and partly extending from the sleeve.).
Claim 6: Fahlbusch discloses that the motor is positioned within a second passageway adjacent to the sleeve (Fig. 1).
Claim 7: Fahlbusch discloses that an exterior wall of the sleeve forms a portion of an interior wall of the second passageway (Fig. 1).
Claim 8: Fahlbusch discloses that the first passageway is larger than the second passageway (Fig. 1).
Claim 9: Fahlbusch discloses that the housing forms a cylindrical shape conforming to the first passageway and a protrusion conforming to the second passageway (The housing forms a cylindrical passageway holding the lenses. Fig. 1. The portion of the housing that holds the motors is a non-cylindrical protrusion adjacent to this passageway. Id.).
Claim 12: Fahlbusch discloses that each lens of the second plurality of lenses is fixed in position within the passageway (When the lens group position is not being adjusted, it is fixed in position within the passageway. Fig. 1 and ¶¶ 21-24.).
Claim 13: Fahlbusch discloses that the carrier is configured to move the first plurality of lenses away from the second plurality of lenses along the axis to increase the distance (¶¶ 24-25).
Claim 14: Fahlbusch discloses that the carrier is configured to move the first plurality of lenses towards the second plurality of lenses along the axis to decrease the distance (¶¶ 24-25).
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 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Fahlbusch.
Claims 10 and 11 recite that the first plurality of lenses comprises 3 or more lenses and the second plurality of lenses comprises 6 or more lenses. This is not disclosed by Fahlbusch, which only discloses first and second “lens groups.” However, official notice is taken that it was well known to have lens groups having the number of lenses recited in claims 10 and 11. Therefore it would have been obvious to the skilled artisan to modify the objective of Fahlbusch to include this, the rationale being to provide improved optics.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J HANCE/Primary Examiner, Art Unit 3992
Conferees:
/CHARLES R CRAVER/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
1 The term “comprising” is “synonymous with ‘including,’ ‘containing,’ or ‘characterized by.’" MPEP 2111.03 I.
2 The specification shows that the “processor,” which is recited in the final limitation of claim 1, is separate from the objective. See e.g. Fig. 3 and its description. Therefore, despite language appearing to require the microscope objective to “comprise” the processor, the POSITA would have concluded that the scope of claim 1 did not require that the processor is included in the objective.
3 “If one thing is done in conjunction with another, the two things are done or used together.” Collins Advanced Learner’s Dictionary.
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