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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 13, 2026 has been entered.
Specification
The amendment filed May 13, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: There does not appear to be support in Applicant’s disclosure, as originally presented, for all combinations set forth by the recitation of “moving … concurrently while rotating the one of both of the electrical cable or the part of the laser system, as the at least one sensor remains stationary.” Please refer to the 112(a) section set forth below for more information.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
Claims 1, 3, 8-11, 16 and 28 are objected to because of the following informalities: Claim 1, lines 24-25 should be corrected as follows, “the at least [[a]] part of the circumference of the surface of the foil shield or the mesh of the electrical cable; and” Claim 1, lines 33-34 should be corrected as follows, “predetermined distance from the respective point along the at least [[a]] part of the circumference of the foil should or the mesh of the electrical cable, in order” Claim 1, lines 36-39 should be corrected as follows, “respective point along the at least [[a]] part of a circumference of the surface of the foil shield or the mesh of the electrical cable so that the laser radiation remains constant along the at least [[a]] part of the circumference of the surface of the foil shield or the mesh of the electrical cable and so that the laser radiation is generated after sensing the respective” Claims 3, 8-11, 16 and 28 are objected to for the same issue as set forth above in claim 1. Please corrected claims 3, 8-11, 16 and 28 by deleting the word “a” from “the at least a part of a circumference of the surface of the follow shield or the mesh of the electrical cable” as necessary. Appropriate correction is required.
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, 6, 8-11, 13-16, 28, 30-31, 33-35 and 37-38 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. Claim 1, lines 17-20 recite, “after sensing the respective distance of the at least one sensor to the respective point, moving, using at least one motor and concurrently while rotating the one or both of the electrical cable or the part of the laser system, as the at least one sensor remains stationary, in order to compensate for at least one deviation of the foil shield or mesh…” [emphasis added]. There does not appear to be support in Applicant’s disclosure, as originally presented, for all combinations set forth by the recitation of “moving … concurrently while rotating the one of both of the electrical cable or the part of the laser system, as the at least one sensor remains stationary.” The claim allows for the following combinations: A. rotating a portion of a laser system; B. rotating the electrical cable; or C: rotating both of a portion of a laser system or the electrical cable. Support for these combinations appears to be found in para. 0041, lines 1-7 of Applicant’s disclosure, “[i]n one implementation, the distance sensor, the laser(s) and the lens(s) and the at least one holder move relative to one another. In a first specific implementation, the distance sensor, the laser(s) and the lens(s) are mounted on a carousel which revolves around the stationary holder. In a second specific implementation, the holder moves and the distance sensor, the laser(s) and the lens(s) remain stationary. In a third specific implementation, the holder moves and the distance sensor, the laser(s) and the lens(s) move relative to one another.” In the first specific implementation describe above, only “part of the laser system” is rotated, and thus, the sensor, which is mounted on the carousel, rotates and is not stationary, as required by claim 1 as currently written. In the second specific implementation described above, the holder moves, and the sensor is stationary. The second specific implementation appears to provide support for claim 1, lines 17-20. In the third specific implementation, both of the holder and the sensor rotate. Since the sensor rotates, the sensor cannot be “stationary” as set forth in presently claimed claim 1, lines 17-20. Claim 9, lines 24-28 recite, “after sensing the respective distance of the at least one sensor to the respective point, control the at least one motor in order to move the at least one of
the electrical cable or the part of the laser system concurrently while the one or both of the portion of the laser system or the electrical cable are rotating as the at least one sensor remains stationary.” There does not appear to be support in Applicant’s disclosure, as originally presented, for all combinations set forth by the recitation of “moving … concurrently while rotating the one of both of the electrical cable or the part of the laser system, as the at least one sensor remains stationary.”
The claim allows for the following combinations: A. rotating a portion of a laser system; B. rotating the electrical cable; or C: rotating both of a portion of a laser system or the electrical cable. Support for these combinations appears to be found in para. 0041, lines 1-7 of Applicant’s disclosure, “[i]n one implementation, the distance sensor, the laser(s) and the lens(s) and the at least one holder move relative to one another. In a first specific implementation, the distance sensor, the laser(s) and the lens(s) are mounted on a carousel which revolves around the stationary holder. In a second specific implementation, the holder moves and the distance sensor, the laser(s) and the lens(s) remain stationary. In a third specific implementation, the holder moves and the distance sensor, the laser(s) and the lens(s) move relative to one another.” In the first specific implementation describe above, only “part of the laser system” is rotated, and thus, the sensor, which is mounted on the carousel, rotates and is not stationary, as required by claim 1 as currently written. In the second specific implementation described above, the holder moves, and the sensor is stationary. The second specific implementation appears to provide support for claim 1, lines 17-20. In the third specific implementation, both of the holder and the sensor rotate. Since the sensor rotates, the sensor cannot be “stationary” as set forth in presently claimed claim 1, lines 17-20.
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, 6, 8-11, 13-16, 28, 30-31, 33-35 and 37-38 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, lines 17-20 recite, “after sensing the respective distance of the at least one sensor to the respective point, moving, using at least one motor and concurrently while rotating the one or both of the electrical cable or the part of the laser system, as the at least one sensor remains stationary, in order to compensate for at least one deviation of the foil shield or mesh…” This limitation has the following issues: • It is unclear what can or cannot be included within the scope of “the at least one sensor remains stationary” … “while rotating … the part of the laser system” because this implementation of the invention is not supported by Applicant’s disclosure. • As currently written, the recitation of the word “both” means “the electrical cable and the part of the laser system” are rotated. According to Applicant’s disclosure, the at least one sensor rotates with the part of the laser system. Thus, the sensor is not stationary if both of the electric cable and the part of the laser system rotate during operation. It is unclear what can or cannot be included within the scope of “the at least one sensor remains stationary” … “while rotating … both of the electrical [and] the part of the laser system” because there does not appear to be support for the combination of “as the at least one sensor remains stationary […while rotating the one or both of the electrical cable or the part of the laser system].” Claim 9, lines 24-28 recite, “after sensing the respective distance of the at least one sensor to the respective point, control the at least one motor in order to move the at least one of
the electrical cable or the part of the laser system concurrently while the one or both of the portion of the laser system or the electrical cable are rotating as the at least one sensor remains stationary.” This limitation has the following issues: • It is unclear what can or cannot be included within the scope of “the at least one sensor remains stationary” … “while rotating … the part of the laser system” because this implementation of the invention is not supported by Applicant’s disclosure. • It is unclear what can or cannot be included within the scope of “the at least one sensor remains stationary” … “while rotating … both of the electrical [and] the part of the laser system” because there does not appear to be support for the combination of “as the at least one sensor remains stationary […while rotating the one or both of the electrical cable or the part of the laser system].”
Status of Claims Rejected Under 112 without Prior Art Rejections
It is to be noted that claims 1-3, 6, 8-11, 13-16, 28, 30-31, 33-35 and 37-38 have not been rejected over prior art. It may or may not be readable over the prior art but allowability cannot be determined at this time in view of the issues under 35 USC § 112. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. According to In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL ALLEN DAVIES whose telephone number is (571)270-1511. The examiner can normally be reached Monday-Friday; 9am-5pm EST.
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/SAMUEL A DAVIES/Patent Examiner, Art Unit 3724 June 27, 2026
/BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724
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