`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
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`APPLICATION NO.
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`12/304, 853
`
`23850
`
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`
`
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` F ING DATE
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`01/09/2009
`
`7590
`
`03/25/2013
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`KRATZ,QUINTOS&HANSON,LLP
`1420 K Street, NW.
`4th Floor
`
`WASHINGTON, DC 20005
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
`
`Shigeyuki Nakamura
`
`080518
`
`9103
`
`SOSANYA, OBAFEMI OLUDAYO
`ART UNIT
`PAPER NUMBER
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`2486
`
`MAIL DATE
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`03/25/2013
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`DELIVERY MODE
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`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
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`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Office Action Summary
`
`Application No.
`
`Applicant(s)
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`12/304,853
`
`NAKAMURA ET AL.
`
`Examiner
`OBAFEMI SOSANYA
`
`Art Unit
`2486
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
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`1)IZI Responsive to communication(s) filed on 11 December 2012.
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`2a)IZ| This action is FINAL.
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`2b)I:l This action is non-final.
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`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)IZI Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s) _ is/are withdrawn from consideration.
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`6)I:I Claim(s) _ is/are allowed.
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`7)|Zl Claim(s)_1-4is/are rejected.
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`8)I:I Claim(s) _ is/are objected to.
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`9)I:l Claim((s)
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`are subject to restriction and/or election requirement.
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`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway
`program at a participating intellectual property office for the corresponding application. For more information, please see
`
`htt
`:/'/www.us to. {av/Watents/Init events/neb/Indexls or send an inquiry to PPeredback usntqt 0v.
`
`Application Papers
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`10)|:l The specification is objected to by the Examiner.
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`11)|:| The drawing(s) filed on _ is/are: a)|:l accepted or b)I:l objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)I:I AII
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`b)I:I Some * c)|:l None of:
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`1.I:I Certified copies of the priority documents have been received.
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`2.I:I Certified copies of the priority documents have been received in Application No. _
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`3.|:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) X Notice of References Cited (PTO-892)
`
`2) I] Information Disclosure Statement(s) (PTO/SB/OS)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`
`3) D Interview Summary (PTO-413)
`Paper No(s)/Mai| Date.
`4) D Other:
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`PTOL-326 (Rev. 09-12)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20130313
`
`
`
`

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`Application/Control Number: 12/304,853
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`Page 2
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`Art Unit: 2486
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`DETAILED ACTION
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`Response to Arguments
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`1.
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`Applicant’s arguments with respect to claims 1-4 have been considered but are
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`moot because the arguments do not apply to any of the references being used in the
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`current rejection.
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`Claim Rejections - 35 USC § 103
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`2.
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`3.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103(a) are summarized as follows:
`
`1.
`2.
`3.
`4.
`
`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claims at issue.
`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
`
`4.
`
`Claim 1
`
`is rejected under 35 U.S.C. 103(a) as being unpatentable over Taya et
`
`al. (U.S. Patent Publication No. 20030054335) hereinafter referred to as Taya; in view
`
`of Davidson et al. (U.S. Patent No. 7634305) hereinafter referred to as Davidson.
`
`Regarding Claim 1, Taya discloses a culture observation system comprising:
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`

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`Application/Control Number: 12/304,853
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`Page 3
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`Art Unit: 2486
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`a culturing chamber (e.g. culture chamber 46a of fig. 1) for forming an
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`environment suitable for culturing a culture (e.g. environment of the cell culture
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`device 11 of fig. 1; see paragraph 107);
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`an image pick-up device (e.g. CCD camera 22 of fig. 6) for photographing a
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`microscopic image of the culture (e.g. the CCD camera 22 photographs the first
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`culture chamber 46a; see paragraph 107);
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`a display device (e.g. monitor 104 of fig. 6) for displaying the microscopic
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`image photographed by the image pick-up device (e.g. the CCD camera 22
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`photographs the first culture chamber 46a, and the picture is displayed on the monitor
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`104; see paragraph 107); and
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`a control unit (e.g. control unit 101 of fig. 6 embodies CPU 101a of fig. 6) for
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`controlling the display of the display device (e.g. CPU 101 a sends an output signal
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`to monitor 104; see fig. 6), wherein
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`Taya fails to explicitly disclose the control unit movably displays a
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`predetermined scale to measure displayed objects’ extensions along at least two
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`directions in the microscopic image displayed on the display device, and the
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`predetermined scale is movable over the background in two dimensions.
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`However, Davidson teaches the control unit (e.g. data processor 14 of fig. 1A)
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`movably displays a predetermined scale to measure displayed objects’
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`extensions (e.g. a scale such as scale 56 (FIG. 1A, FIG. 18) may be overlaid or
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`otherwise added to on the displayed image to give an estimate of the sizes of objects;
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`column 4, lines 22-25) along at least two directions in the microscopic image
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`Application/Control Number: 12/304,853
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`Page 4
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`Art Unit: 2486
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`displayed on the display device (e.g. Cartesian coordinates; see column 4, lines 44-
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`47), and the predetermined scale is movable over the background in two
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`dimensions (e.g. any two points of the image can be measured by the scale (see
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`column 6, lines 49-53) along the x and y axes (i.e. Cartesian coordinates)).
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`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time of the invention to incorporate the teachings of Davidson into the teachings of Taya
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`to provide a system and method for accurately determining the size of an image of an
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`object view on a display and measured by a scale.
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`5.
`
`Claim 4 is rejected under 35 U.S.C. 103(a) as being unpatentable over Taya et
`
`al. (U.S. Patent Publication No. 20030054335) hereinafter referred to as Taya; in view
`
`of Davidson et al. (U.S. Patent No. 7634305) hereinafter referred to as Davidson; in
`
`further view of Uchida (U.S. Patent Publication No. 20030012418) hereinafter referred
`
`to as Uchida.
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`Regarding Claim 4, Taya discloses the culture observation system according
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`to any one of claims 1 to 3, wherein the control unit (e.g. control unit 101 of fig. 6
`
`embodies CPU 101a of fig. 6) includes a storage unit (e.g. control unit 101 of fig. 6
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`embodies RAM 1010) for storing the microscopic image photographed by the
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`image pick-up device (e.g. RAM 1010 temporarily stores results of computations
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`performed by the CPU 101 a; see paragraph 48. Computations performed by the Control
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`unit 101/CPU 101a includes taking a photograph of the culture; see paragraph 107),
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`Application/Control Number: 12/304,853
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`Page 5
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`Art Unit: 2486
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`culturing information related to the culturing environment of the culturing
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`chamber at the time of photographing in association with the microscopic image
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`(e.g. The data file 102 is constituted by a storage device such as a hard disk drive and
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`stores predetermined image data such as cell pattern data of anchorage-dependent
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`cells and threshold value data in a remaining culture medium sensor 65a and the gas
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`analyzer 93. The CPU 101 a compares the cell pattern data with image data
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`photographed by the CCD camera 22 and calculates concentration of adhered cells in
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`the image data; paragraph 49. The timer 106 of fig. 6 starts measurement of culture
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`time and provides the culture time data to the CPU 101a; paragraph 52. In other words,
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`the CPU 101a collects information about the cell pattern data of the photographed
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`image and the time).
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`Taya fails to explicitly disclose in association with photographing information
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`such as a photographing date and causes the storage unit to store, in addition to
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`the photographing information.
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`However, Uchida teaches in association with photographing information
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`such as a photographing date and causes the storage unit to store, in addition to
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`the photographing information (e.g. the items of the imaging conditions such as the
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`imaging date, exposure time, and exposure correction value, and the items of the
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`microscope conditions such as the microscope name, magnification of the microscope,
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`and microscopy are written over the imaged image data acquired by the imaging as the
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`symbol string information; paragraph 52).
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`Application/Control Number: 12/304,853
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`Page 6
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`Art Unit: 2486
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`Therefore, it would have been obvious to one of ordinary skill in the art at the
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`time of the invention to incorporate the teachings of Uchida into the teachings of Taya
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`and Davidson to provide an imaging apparatus for a microscope, in which symbol string
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`information is written with respect to image data acquired by imaging and thereby the
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`image data can be associated and displayed with the symbol string information without
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`any special apparatus.
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`6.
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`Claim 2 is rejected under 35 U.S.C. 103(a) as being unpatentable over Taya et
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`al. (U.S. Patent Publication No. 20030054335) hereinafter referred to as Taya; in view
`
`of Davidson et al. (U.S. Patent No. 7634305) hereinafter referred to as Davidson; in
`
`further view of Shikano et al. (U.S. Patent Publication No. 20080218604) hereinafter
`
`referred to as Shikano.
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`Regarding Claim 2, Taya fails to explicitly disclose the culture observation
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`system according to claim 1, wherein the control unit changes the display of the
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`scale in accordance with a photographing magnification of the microscopic
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`image of the image pick-up device.
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`However, Shikano teaches wherein the control unit changes the display of
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`the scale in accordance with a photographing magnification of the microscopic
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`image of the image pick-up device (e.g. a scale generating section 14 of fig. 1 for
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`generating a scale 5 of fig. 1 based on the optical magnification outputted from the
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`exchange lenses 4F, 42 both of fig. 1; see paragraph 40).
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`Application/Control Number: 12/304,853
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`Page 7
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`Art Unit: 2486
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`Therefore, it would have been obvious to one of ordinary skill in the art at the
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`time of the invention to incorporate the teachings of Shikano into the teachings of Taya
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`and Davidson to provide a lens exchange type image pickup apparatus having an
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`image processing apparatus of displaying an image of an object picked up by an image
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`sensor and a scale indicative of a reference length in juxtaposition on a display screen,
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`and an exchange lens used therefor.
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`7.
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`Claim 3 is rejected under 35 U.S.C. 103(a) as being unpatentable over Taya et
`
`al. (U.S. Patent Publication No. 20030054335) hereinafter referred to as Taya; in view
`
`of Davidson et al. (U.S. Patent No. 7634305) hereinafter referred to as Davidson; in
`
`further view of Maddison (U.S. Patent Publication No. 20030214706) hereinafter
`
`referred to as Maddison.
`
`Regarding Claim 3, Taya discloses a culture observation system comprising:
`
`a culturing chamber (e.g. culture chamber 46a of fig. 1) for forming an
`
`environment suitable for culturing a culture (e.g. environment of the cell culture
`
`device 11 of fig. 1; see paragraph 107);
`
`an image pick-up device (e.g. CCD camera 22 of fig. 6) for photographing a
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`microscopic image of the culture (e.g. the CCD camera 22 photographs the first
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`culture chamber 46a; see paragraph 107); and
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`

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`Application/Control Number: 12/304,853
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`Page 8
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`Art Unit: 2486
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`a control unit (e.g. control unit 101 of fig. 6 embodies CPU 101a of fig. 6) for
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`controlling the image pick-up device (e.g. CPU 101a sends an output signal to
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`monitor 104; see fig. 6),
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`Taya fails to explicitly disclose the control unit is configured to display a
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`photographing coordinate in at least two dimensions on a display device.
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`However, Davidson teaches the control unit (e.g. data processor 14 of fig. 1A)
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`is configured to display a photographing coordinate in at least two dimensions
`
`on a display device (e.g. any two points of the image can be measured by the scale
`
`(see column 6, lines 49-53) along the x and y axes (i.e. Cartesian coordinates)).
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time of the invention to incorporate the teachings of Davidson into the teachings of Taya
`
`to provide a system and method for accurately determining the size of an image of an
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`object view on a display and measured by a scale.
`
`Taya fails to explicitly disclose wherein the control unit has an auto-focus
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`function of detecting and focusing on a position which is high in sharpness of the
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`microscopic image photographed by the image pick-up device and a function of
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`detecting and focusing on another position which is high in sharpness in a depth
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`direction.
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`However, Maddison teaches wherein the control unit (e.g. computer 19 of fig.
`
`1) has an auto-focus function (focusing of the focus device 21 a of fig. 1
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`is controlled
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`by piezo-electric driver; see paragraph 24) of detecting and focusing on a position
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`which is high in sharpness of the microscopic image photographed by the image
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`

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`Application/Control Number: 12/304,853
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`Page 9
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`Art Unit: 2486
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`pick-up device (e.g. the ability to achieve sharply focused images at different levels
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`within a specimen (i.e. in different optical planes of an object) is dependent upon the
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`depth of field and the depth of focus of the microscope; paragraph 9) and a function of
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`detecting and focusing on another position which is high in sharpness in a depth
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`direction (e.g. the ability to achieve sharply focused images at different levels within a
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`specimen (i.e. in different optical planes of an object) is dependent upon the depth of
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`field and the depth of focus of the microscope; paragraph 9).
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`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time of the invention to incorporate the teachings of Maddison into the teachings of
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`Taya and Davidson to provide a system and method for providing digital images of a
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`microscope specimen, which images can be displayed on a display screen to resemble
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`the images viewed through a microscope.
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`Conclusion
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`8.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`Application/Control Number: 12/304,853
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`Page 10
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`Art Unit: 2486
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to OBAFEMI SOSANYA whose telephone number is
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`(571 )270-1 069. The examiner can normally be reached on Monday-Friday: 9:30am-
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`6:OOpm EASTERN.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Mehrdad Dastouri can be reached on 571-272—7418. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
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`

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`Application/Control Number: 12/304,853
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`Page 11
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`Art Unit: 2486
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`/OBAFEM| SOSANYA/
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`Examiner, Art Unit 2486
`
`/Tung Vo/
`Primary Examiner, Art Unit 2486
`
`03/15/2013
`
`