`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`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
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`23850
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` F ING DATE
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`01/09/2009
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`7590
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`09/13/2012
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`KRATZ,QUINTOS&HANSON,LLP
`1420 K Street, NW.
`4th Floor
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`WASHINGTON, DC 20005
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
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`
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`CONF {MATION NO.
`
`Shigeyuki Nakamura
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`080518
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`9103
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`SOSANYA, OBAFEMI OLUDAYO
`ART UNIT
`PAPER NUMBER
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`2486
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`MAIL DATE
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`09/13/2012
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`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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`

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`Office Action Summary
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`Application No.
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`Applicant(s)
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`12/304,853
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`NAKAMURA ET AL.
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`Examiner
`OBAFEMI SOSANYA
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`Art Unit
`2486
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`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).
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`Status
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`1)IZI Responsive to communication(s) filed on 11 July 2012.
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`2a)I:l This action is FINAL.
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`2b)IZ| 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) _ are subject to restriction and/or election requirement.
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`Application Papers
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`10)I:I 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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`12)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`13)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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`4) D Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper N°(5 )/Mai| Date. _
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`5)I:I Notice of Informal Patent Application
`3) IZI Information Disclosure Statement(s) (PTO/SB/OS)
`Paper No(s)/Mai| DateM20120”: Other:
`US. Patent and Trademark Office
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`PTOL-326 (Rev. 03-11)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20120829
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`
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`

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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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`Claim Rejections - 35 USC § 102
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`1.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in
`the United States.
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`2.
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`Claims 1, 2, and 4 are rejected under 35 U.S.C. 102(b) as being clearly
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`anticipated by Uchida et al. (U.S. Patent Publication No. 20030012418) hereinafter
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`referred to as Uchida.
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`Regarding Claim 1, Uchida discloses a culturing chamber (e.g. microscope
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`main body 2 of fig. 1) for forming an environment suitable (e.g. an objective lens 5 of
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`fig.
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`1 for observing the sample 3 of fig. 1; a beam splitter 7 of fig. 1 disposed on an
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`optical axis 6 of the objective lens 5; an eyepiece lens 8 which is disposed on a
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`reflective optical path of the beam splitter 7, all together form an environment for the
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`microscope main body 2) for culturing a culture (e.g. sample 3 of fig. 1);
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`image pick-up device (e.g. camera head section 10 of fig. 1) for
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`photographing a microscopic image of the culture (e.g. sample 3 of fig. 1);
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`display device (e.g. display section 12 of fig. 1) for displaying the
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`microscopic image photographed by the image pick-up device (e.g. images of the
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`sample captured by the camera head section 10 of fig.
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`1
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`is displayed on the display
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`section 12 of fig. 1);
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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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`control unit (e.g. operation section 11 of fig. 1) for controlling the display of
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`the display device (e.g. display section 12 of fig.
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`1
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`is controlled by the operation
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`section 11 of fig. 1;see figs. 4 and 5, paragraph 37); and
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`wherein the control unit (e.g. operation section 11 of fig. 1) movably displays
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`a predetermined scale in at least two dimensions (e.g. the image displayed is shown
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`in at least 2 dimensions) in the microscopic image displayed on the display device
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`(e.g. when the observer inputs a menu item with respect to the general magnification N,
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`the scale graduation value and scale width ratio are calculated by the operation of the
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`control circuit 33 of fig. 6, and the scale graduation value and scale line 61 are
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`displayed; see fig. 14).
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`Regarding Claim 2, Uchida discloses wherein the control unit changes the
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`display of the scale in accordance with a photographing magnification of the
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`microscopic image of the image pick-up device (e.g. the observer frequently
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`changes the magnification Nm of the microscope, particularly the magnification of the
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`objective lens 5 of fig. 1, and performs the microscope observation. Therefore, a
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`plurality of types of general magnifications N can be set and stored in the control circuit
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`33 of fig. 6 (which is disposed in operation section 11 - which is considered as the
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`control unit) by a menu function; paragraph 81).
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`Regarding Claim 4, Uchida discloses wherein the control unit includes
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`storage unit (e.g. operation section 11 of fig. 4 includes memory apparatus 26 of fig. 4)
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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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`for storing the microscopic image photographed by the image pick-up device
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`(e.g. the image is displayed together with the symbol string information written during
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`the imaging (i.e. by the camera head section 10 of fig. 1); paragraph 51) in association
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`with photographing information such as a photographing date and causes the
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`storage means to store (e.g. the items of the imaging conditions such as the imaging
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`date, exposure time, and exposure correction value, and the items of the microscope
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`conditions such as the microscope name, magnification of the microscope, and
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`microscopy are written over the imaged image data acquired by the imaging as the
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`symbol string information; paragraph 52), in addition to the photographing
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`information, culturing information related to the culturing environment (e.g. items
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`of the microscope conditions such as the microscope name, magnification of the
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`microscope, and microscopy; paragraph 52) of the culturing chamber (e.g.
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`microscope main body 2 of fig. 1) at the time of photographing in association with
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`the microscopic image (e.g. sample 3 of fig. 1).
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`Claim Rejections - 35 USC § 103
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`3.
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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:
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`(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.
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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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`4.
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`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:
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`.‘hPONTL
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`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.
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`5.
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`Claim 3 is rejected under 35 U.S.C. 103(a) as being unpatentable over Uchida et
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`al. (U.S. Patent Publication No. 20030012418) hereinafter referred to as Uchida; in view
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`of Ramm et al. (U.S. Patent Publication No. 20090074283) hereinafter referred to as
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`Ramm.
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`Regarding Claim 3, Uchida discloses a culturing chamber (e.g. microscope
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`main body 2 of fig. 1) for forming an environment suitable (e.g. an objective lens 5 of
`
`fig.
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`1 for observing the sample 3 of fig. 1; a beam splitter 7 of fig. 1 disposed on an
`
`optical axis 6 of the objective lens 5; an eyepiece lens 8 which is disposed on a
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`reflective optical path of the beam splitter 7, all together form an environment for the
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`microscope main body 2) for culturing a culture (e.g. sample 3 of fig. 1);
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`an image pick-up device (e.g. camera head section 10 of fig. 1) for
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`photographing a microscopic image of the culture (e.g. sample 3 of fig. 1);
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`a control unit (e.g. operation section 11 of fig. 1) for controlling the image
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`pick-up device (e.g. display section 12 of fig.
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`1
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`is controlled by the operation section 11
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`of fig. 1 ; see figs. 4 and 5, paragraph 37);
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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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`the control unit (e.g. operation section 11 of fig. 1) is configured to display a
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`photographing coordinate in at least two dimensions (e.g. the image displayed is
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`shown in at least 2 dimensions) on a display device (e.g. display section 12 of fig. 1).
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`Uchida 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 (e.g. best focus position) photographed by the image pick-up
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`device and a function of detecting and focusing on another position which is high
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`in sharpness in a depth direction.
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`However, Ramm teaches wherein the control unit has an auto-focus function
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`(confocal autofocus device 300, fig. 1) of detecting and focusing on a position which
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`is high in sharpness of the microscopic image (e.g. best focus position)
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`photographed by the image pick-up device and a function of detecting and
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`focusing on another position which is high in sharpness in a depth direction.
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`(CCD camera 500, fig. 1) (paragraph 87).
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`Therefore, it would have been obvious to one of ordinary skilled in the art at the
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`time the invention was made to incorporate the teachings of Ramm into the invention
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`taught by Greenberger to auto focusing on the object clearly and faster.
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`The motivation for doing so would make improvement in optics, mechanics and
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`electronic components for automated position, focusing, imaging and processing of a
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`multiplicity of samples are integrated as systems within which the segmentation and
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`measurement methods may be mounted (paragraphs 37-39).
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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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`Conclusion
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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
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`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.
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`Status information for unpublished applications is available through Private PAIR only.
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`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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`/OBAFEMI SOSANYA/
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`Examiner, Art Unit 2486
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`/Tung Vo/
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`Primary Examiner, Art Unit 2486
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`08/29/2012
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`