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 US Patent No. 9,933,607 (“the ‘607 patent”). In a 07/23/2026 response to the 04/23/2026 non-final Office action (“NFOA”), the applicant has amended claims 1, 3, and 12. Claim 4 was previously canceled. Claims 1-3 and 5-12 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.
Applicant’s Response to the NFOA
37 CFR 1.173 Objection
The application was previously objected to because the claims were amended showing omissions with strikethrough, rather than brackets. NFOA at 3. The claims have been amended in the recent response showing omissions using double brackets. Double bracketing is reserved for omissions in twice reissued patents. See MPEP 1411. To show omissions in this application, single brackets should be used. Please refer to MPEP 1453(V) for example claim amendments.
Defective Declaration
The declaration was objected to for failing to provide a proper error statement, and the claims were rejected under § 251 based on this issue. NFOA at 3-4. The applicant states that a “corrected reissue oath/declaration” has been submitted. Remarks at 5. No corrected declaration was received with the applicant’s recent response. This objection, and the corresponding claim rejection under § 251, are maintained. To overcome this, the applicant must submit a new declaration (form PTO-AIA /08) with a proper error statement.
§ 251 Rejections
The NFOA included four separate rejections under § 251. See NFOA at 4-6. The rejection that was based on the defective declaration is addressed above, and is maintained. The recent amendment overcomes the “original patent” and new matter rejections, which are now withdrawn.
The previous rejection for broadening after 2 years is withdrawn. Claim 1 previously recited that the microscope objective comprises the objective turret. The claims has been amended to now recite that imaging system, rather than the microscope objective, comprises the objective turret. On its face, this change appears to enlarge the scope of the claim, which would be prohibited under § 251 because this reissue application was filed more than two years after the issue date of the ‘607 patent. However, as the applicant points out (see Remarks, 6), the specification only describes that the objective is mounted to the turret. See ‘607 patent at 6:52-57. It is clear from the specification that the objective does not “comprise” the turret, as the claim previously recited. In light of the specification, the POSITA would recognize that this was recited in error, and it would be apparent how to correct the claim to be consistent with the specification. Correcting an error in a claim in a manner that the skilled artisan would find apparent “does not represent a change of claim scope, but merely a correction of the claim to be consistent with the disclosure of the specification.” Forest Laboratories v. Ivax Pharmaceuticals, Inc., 501 F. 3d 1263, 1272 (Fed. Cir. 2007). This amendment therefore does not enlarge the scope of claim 1.
While the amended claims are no longer broader for the reasons that were described in the NFOA, the recent amendment enlarges claim scope in another respect. See the updated rejection under § 251 below.
§ 112(a) Rejection
The § 112(a) rejection is withdrawn in view of the recent claim amendments.
§ 112(b) Rejections
The claims were rejected as being indefinite for a variety of reasons. See NFOA at 7-11. Some, but not all, of these issues have been overcome.
“inaccessible”
The claims were rejected due to the indefinite claim term “inaccessible.” Id. at 8-9. This term has been removed from the claims, and this rejection is withdrawn.
“closed-platform”
The claims were also rejected because it was stated that the phrase “closed-platform” turret was indefinite. Id. at 9. The applicant responds that “this is a type of turret that would be readily understood by one skilled in the art” as a “turret that is enclosed in a housing to protect the internal mechanics and optics of the imaging system.” Remarks at 8. This is not persuasive.
A search of the relevant patent literature for the concept of a “closed platform” turret returns only the applicant’s publications. This implies that “closed-platform turret” is not a term of art that would be understood to carry an accepted meaning. Therefore the examiner disagrees that this phrase, by itself, would be understood to describe a turret that is fully enclosed in a housing. The specification describes that some “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.” ‘607 patent at 3:49-51. This appears to describe that the microscope housing is closed, and the turret is housed within the microscope. It remains unclear what is required by reciting that the turret is “closed-platform” – is the turret itself “closed” in some manner, or does it reside within a microscope housing that is closed? Stated in another way, it is not clear if being “closed-platform” limits the turret to a particular structure. That is, does the claim require a specific kind of turret, or does it merely describe that the turret is housed within a closed microscope body?
The specification mentions “closed or inaccessible objective turrets” (see ‘607 patent at 57-61), and “a microscope objective that is capable of working in closed-platform microscope turrets” (id. at 9:8-11). There is little other discussion of this term. The person skilled in this field would not understand from the specification what is and what is not a “closed-platform” turret. For example, Fahlbusch describes that its microscope objective (which is mounted in a turret) is “difficult to access.” See Fahlbusch Abs and ¶ 5. Based on the uncertainty of the claim term “closed-platform,” it remains unclear whether a disclosure such as this would fall within the broadest reasonable interpretation of the claim limitation “closed-platform turret.” Because of this uncertainty, this rejection is maintained.
Removal of “comprising”
The rejection that is described on pg. 9, lines 7-14 of the NFOA is withdrawn.
Intended Result Language
The claims were rejected due to the language “thereby remotely adjust a spherical aberration (SA) setting of the microscope objective without direct user manipulation.” NFOA at 9-10. The applicant traverses, and submits that “functional language is not categorically prohibited as the Office Action suggests.” Remarks at 8. This is not persuasive.
The claims were not rejected because they contain functional language. The claims were rejected because it is not clear whether the language that is quoted above is a functional limitation. This language does not appear to provide any additional description of a function that the microscope objective is configured to perform. Instead, this language only seems to describe what will already occur as a result of changing the distance between the lenses in the manner that is claimed.
The applicant’s remarks appear to confirm this. The applicant states that “one of skill in the art would understand that the relative motion of the carrier along the imaging access, changing the distance between the lenses, functions to adjust the SA setting of the microscope in an indirect manner (i.e., without direct manipulation of the microscope).” Remarks at 8 (emphasis mine). This argument is understood to state that changing the distance between the lenses using the integral motor will, by definition, result in “remotely adjust a spherical aberration (SA) setting of the microscope objective without direct user manipulation.” If this “thereby” clause only describes an inherent result of the structure and functions that are already claimed, the clause does not provide any additional functional or a structural limitation on the claim. In other words: would the claim scope be any different if this clause were removed? It is not clear whether it would or would not.
The broadest reasonable interpretation of this language includes that it describes an intended result of changing distances between the 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).
Prior Art Rejections
The applicant’s arguments regarding the prior art rejections are moot in view of the new grounds of rejection that are given below.
The assertion of official notice that was taken in the rejection of claims 10 and 11 (see NFOA at 16) was not traversed, rendering this subject matter admitted prior art. See MPEP 2144.03(C).
Objection, 37 CFR 1.173 – Improper Amendment
The amendment filed 07/23/2026 proposes amendments to the claims that do not comply with 37 CFR 1.173(b), which sets forth the manner of making amendments in reissue applications. Amendments have been made using double brackets, where single brackets should be instead used. A supplemental paper correctly amending the reissue application 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 error that is described in the specification no longer applies to the claims that were amended on 07/23/2026.
Claim Rejections, 35 USC § 251
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.
Claims 1-3 and 5-14 are additionally rejected under § 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 of the patent required the turret to be “inaccessible,” but amended claim 1 no longer requires this. This change enlarges the scope of the claim. The NFOA described that the term “inaccessible” rendered the claims indefinite. See NFOA at 8-9. But an indefinite term is not necessarily a non-limiting term. The claims have been broadened because they no longer require the turret to be inaccessible, and therefore now cover something that the claims of the ‘607 patent did not.
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 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).
The claims also recite a “closed-platform objective turret.” It is 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.
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 1-3 and 5-14 are rejected under 35 U.S.C. 103 as being unpatentable over Schek, US 20130010367 in view of Fahlbusch, US 20110082590.
Claim 1: Schek discloses an imaging system, comprising:
at least one objective turret (¶ 56);
a microscope objective (Fig. 12), comprising:
a housing (housing 12. See ¶ 59 and Fig. 12.);
a sleeve forming a first passageway in housing (Objective sleeve 46. ¶¶ 46 and 59.);
a first plurality of lenses positioned within the first passageway on a sample end of the microscope objective (Lens unit 60 is a group of combined lenses. See ¶¶ 2 and 47, and Fig. 12.);
a second plurality of lenses positioned within the first 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 (See Fig. 12, which depicts a second lens group on the optical axis);
a carrier coupled to the first plurality of lenses and positioned at least partially within the first passageway (Lens mount 58 holds lens group 60 within the passageway of the sleeve. ¶¶ 47 and 58, and Fig. 12);
an integral motor coupled to the carrier and configured to move the carrier along the imaging axis, when the microscope objective is mounted in the at least one 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, thereby remotely adjust a setting of the microscope objective without direct user manipulation (Integral motor 202 causes lens group 60 to move along the optical axis. ¶58 and Fig. 12. This enables remote adjustment of objective settings without requiring that a user manually adjust a correction ring. Id. and ¶5. See also the § 112(b) rejection above regarding this “thereby” clause.); and
a processor coupled to the motor and configured to provide instructions to drive the motor (Wired and wireless control of the motor is provided externally from a control unit. ¶¶ 20-21, 41, and 59. The POSITA would understand this to describe that a processor in the control unit is physically or functionally coupled to the motor),
wherein the second plurality of lenses is fixed in a position within the first passageway, and the integral motor is the sole motor configured to move the carrier and the first plurality of lenses relative to the second plurality of lenses along the imaging axis (¶ 47 – lens unit 60 moves, while the other lens units in the objective do not.).
Schek does not disclose that the objective turret is closed-platform; or adjusting a spherical aberration (SA) setting. While this language is indefinite and/or does not appear to limit the claim (see the § 112(b) rejections above), it will be addressed here.
Fahlbusch discloses a closed-platform objective turret, and remotely adjusting a spherical aberration (SA) setting of a microscope (The objective and turret (see ¶ 11) are “difficult to access.” Fahlbusch Abstract and ¶¶ 5-6. This falls within the BRI of the claim limitation requiring the turret to be “closed-platform” when that term is understood in light of a largely silent specification. See the § 112(b) rejections above. Fahlbusch additionally describes remotely adjusting SA settings of the objective. Abstract and ¶ 6.).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Schek with teachings found in Fahlbusch. The POSITA would have found motivation in Fahlbusch to use Schek’s turret/objective system in a closed-platform environment, and to also use Schek’s lens adjustment to correct spherical aberration settings of the lens. The POSITA would have understood that this would provide increased applicability of Schek’s system to a wider variety of microscope types, and would provide more convenience for users of such systems. The POSITA would also have recognized that Schek’s lens adjustment would likewise be applicable for adjusting SA settings, as suggested in Fahlbusch.
Additional evidence that the POSITA would recognize that Schek’s system would function to adjust SA settings is provided by Schumann et al., US 20170168280. This reference describes, in its 02/12/2014 foreign priority document, “correcting elements which are adjustable for correction of the spherical aberration. Such correcting elements which are known from the prior art have, for example, lens mounts which are adjustable by means of a motor and by which a lens unit contained in the microscope objective can be displaced along the optical axis for correction of the imaging error. An example of such a correcting adjustment is disclosed in DE 10 2011 051 677.” DE 10 2011 051 677 is the foreign priority document of the Schek application and contains substantially similar disclosure.
Claim 2: Schek-Fahlbusch discloses that the motor is configured to move the carrier to displace each lens of the 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 (Lens unit 60, which comprises plural lenses, is moved by the motor. Schek ¶¶ 2 and 47. This meets the requirements of this claim.).
Claim 3: Schek-Fahlbusch discloses that the housing is closed about the first plurality of lenses and the second plurality of lenses and the motor (Schek Fig. 12.).
Claim 5: Schek-Fahlbusch discloses that the carrier is positioned in part within the sleeve and in part extending from a sample end of the sleeve (Schek Fig. 12, Fahlbusch Fig. 2.).
Claim 6: Schek-Fahlbusch discloses that the motor is positioned within a second passageway adjacent to the sleeve (Schek Fig. 12: motor 202 is position in a passageway adjacent to the sleeve.).
Claim 7: Schek-Fahlbusch discloses that an exterior wall of the sleeve forms a portion of an interior wall of the second passageway (Schek Fig. 12).
Claim 8: Schek-Fahlbusch discloses that the first passageway is larger than the second passageway (Schek Fig. 12).
Claim 9: Schek-Fahlbusch discloses that the housing forms a cylindrical shape conforming to the first passageway and a protrusion conforming to the second passageway (Schek Fig. 12; Fahlbusch Fig. 1).
Claims 10 and 11: Schek-Fahlbusch does not explicitly disclose that the first plurality of lenses comprises 3 or more lenses or that the second plurality of lenses comprises 6 or more lenses. Official notice was taken in the 04/23/2026 non-final Office action that this was well known (see pg. 16). This assertion was not traversed by the applicant, rendering this subject matter admitted prior art. See MPEP 2144.03(C). It would have been obvious to the POSITA to modify Schek-Fahlbusch to include these features in order to improve optics.
Claim 12: Schek-Fahlbusch discloses that each lens of the second plurality of lenses is fixed in position within the first passageway (Schek Fig. 8-12 and their description; only lens group 60 moves. The other lenses are fixed in the objective.).
Claims 13 and 14: Schek-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, and the carrier is configured to move the first plurality of lenses towards the second plurality of lenses along the axis to decrease the distance (Schek ¶¶ 47-48).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ Reexamination Specialist, Art Unit 3992
Conferees:
/CHARLES R CRAVER/ Reexamination Specialist, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
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