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
In view of the Appeal Brief filed on 6 May 2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/EDWARD F LANDRUM/ Supervisory Patent Examiner, Art Unit 3761
Response to Amendment
New Drawing objections have been provided in the present Office action.
New 35 USC 112 rejections have been provided in the present Office action
Applicant’s arguments in the Appeal Brief filed 6 May 2026, with respect to the rejection of the claims under 35 USC § 103 have been fully considered. Applicant’s arguments on page on 14 of the Appeal Brief were found to be persuasive. Specifically, the examiner agrees with the Applicant that the embodiment of fig. 1 of Meixlsperger teaches using “gas” (Meixlsperger only teaches “gas” and makes no mention of using “air” in this embodiment) and that a separate embodiment in figs. 2A and 2B of Meixlsperger teaches using “air.” The 35 USC 103 rejection has been reformatted to show how combining these different embodiments would be an obvious modification to those of ordinary skill in the art. The Applicant’s remaining arguments were fully considered but were found not to be persuasive. Therefore, the claims remain rejected as obvious in view of the prior art.
Status of the Claims
In the amendment dated 13 May 2025, the status of the claims is as follows: Claims 21, 24, 26-27, 41-42, and 45-46 have been amended.
Claims 21-24, 26-27, 32-46, and 51-53 are pending. Claims 33-40 have been withdrawn from consideration.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, a drawing showing the “open bottom” (claims 21 and 41) with “edges of at least a portion of the plurality of walls of the housing making contact against the target surface” (claim 21) as well as the “first inlet port” and the “second inlet port” (claims 21 and 41) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are: “contaminant sequestration system” in claims 23 and 44. The generic placeholder is “system” and the functional limitation attributed to the claimed system is “contaminant sequestration.” Structure that is used from the Specification to cover the claimed functional limitation is a “filter” (para 0016) or equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 21-24, 26-27, 32, 41-46, and 51-53 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.
Claims 21 and 41 combine elements of figs. 2 and 4 of the Instant Application, which are not described as being interchangeable but instead are described as being separate embodiments. Specifically, the Specification describes the fig. 4 embodiment as a “cross-sectional view” that is “similar” to the fig. 2 embodiment but that “includes a plurality of ports/openings for air to enter a housing.” Whereas the fig. 2 embodiment shows an “opening…located on a lower end of the housing,” the fig. 4 embodiment shows a lower surface 412 on the bottom of the housing. Similarly, claims 21 and 41 require an “open bottom,” which is shown in fig. 2, but the claims also require a “first inlet port” and a “second inlet port,” which is shown in fig. 4. As a result, the claims combine elements from separate embodiments of the Specification to form a new hybrid invention, and the Specification does not provide support to show that the Applicant had possession of this hybrid invention at the time of filing.
In claims 27 and 46, the limitation: “wherein the housing comprises a bottom wall and the fume and contaminant capture system defines a third inlet port that is vertically aligned with the window, said third inlet port providing an opening in the bottom wall for the laser output to contact the target surface” is not mentioned in the original Specification or in the original set of Claims. Although the Specification describes a lower surface 412, which appears to be the claimed “bottom wall” and a third port 408, which appears to be the claimed “third inlet port,” there is no mention of an “opening” in the lower surface 412. As a result, by using this claim limitation, the Applicant introduces new matter into the patent application.
Claims 22-24, 26, 32, 42-45, and 51-53 are rejected based on their dependence to claims 21 and 41.
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 21-24, 26-27, 32, 41-46, and 51-53 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.
Claims 21 and 41 are directed to a “fume and contaminant capture system,” where “the fume and contaminant capture system … defining an outlet port connectable to a vacuum system.” The scope of the claimed “fume and contaminant capture system” is unclear. Specifically, it appears that the claimed “fume and contaminant capture system” includes a “vacuum system,” which is not included within the “fume and contaminant capture system.” As a result, the scope of the preambles in claims 21 and 41 is unclear—are claims 21 and 41 directed to a “fume and contaminant capture system” or something more than a “fume and contaminant capture system?” Figure 2 of the Drawings in the Instant Application further suggests that what is being claimed in claims 21 and 41 is something more than a “fume and contaminant capture system.” Specifically, fig. 2 shows a vacuum system 106 that is separate from the fume and contaminant capture system 100. Recommend broadening the scope of the preambles if something more than a “fume and contaminant capture system” is being claimed.
Claims 23 and 44 are directed to a “fume and contaminant capture system,” which further comprises a “contaminant sequestration system.” The scope of the claimed “fume and contaminant capture system” is unclear. Specifically, it appears that the claimed “fume and contaminant capture system” includes a “contaminant sequestration system,” which is not included within the “fume and contaminant capture system” (fig. 2 of the drawings in the Instant Application shows a sequestration system 120 that is separate from the fume and contaminant capture system 100) As a result, the scope of the preambles in claims 23 and 44 is unclear—are claims 23 and 44 directed to a “fume and contaminant capture system” or something more than a “fume and contaminant capture system?” Recommend broadening the scope of the preambles in claims in claims 21 and 41 if something more than a “fume and contaminant capture system” is being claimed.
Claim 27 recites “a bottom wall.” However, claim 27 is dependent on claim 21, which recites an “open bottom” with “edges of at least a portion of the plurality of walls of the housing making contact against the target surface.” It is unclear how there can be a “bottom wall,” if there is also an “open bottom.” For example, a box with a “bottom wall” does not have an open bottom but instead has a closed surface on the bottom of the box. Since there is no way of understanding how these two limitations can coexist, as best understood, if the prior art comprises the claimed structure, it will be presumed that the system can operate as intended.
Claims 32 and 51 are directed to a “fume and contaminant capture system,” which further comprises “laser equipment.” The scope of the claimed “fume and contaminant capture system” is unclear. Specifically, it appears that the claimed “fume and contaminant capture system” includes “laser equipment,” which is not included within the “fume and contaminant capture system” (fig. 2 of the drawings in the Instant Application shows a laser 102 that is separate from the fume and contaminant capture system 100) As a result, the scope of the preambles in claims 32 and 51 is unclear—are claims 32 and 51 directed to a “fume and contaminant capture system” or something more than a “fume and contaminant capture system?” Recommend broadening the scope of the preambles in claims in claims 21 and 41 if something more than a “fume and contaminant capture system” is being claimed.
Claim 46 recites “a bottom wall.” However, claim 46 is dependent on claim 41, which recites an “open bottom.” It is unclear how there can be a “bottom wall,” if there is also an “open bottom.” For example, a box with a “bottom wall” does not have an open bottom but instead has a closed surface on the bottom of the box. Since there is no way of understanding how these two limitations can coexist, as best understood, if the prior art comprises the claimed structure, it will be presumed that the system can operate as intended.
Claims 22, 24, 26, 42-43, 45, and 52-53 are rejected based on their dependence on the independent claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 21, 23, 26-27, 32, 41-42, 44, 46, and 51-52 are rejected under 35 U.S.C. 103 as being unpatentable over in view of Meixlsperger et al. (DE-102013214925-A1, referencing foreign version for Drawings and provided English translation for written disclosure) in view of Gutierrez et al. (US-20160221121-A1).
Regarding claim 21, Meixlsperger teaches a fume and contaminant capture system (fig. 1; “fumes…contamination,” para 0002) comprising:
a housing (exterior walls of fig. 1, i.e., wall 12 and top of housing 100, fig. 1) comprising a plurality of walls (wall 12 and top wall of housing 100, fig. 1) and an open bottom (bottom of fig. 1 is open at openings 28 and 30, fig. 1) constituting a lower end of the housing (bottom of fig. 1 where openings 28 and 30 are located) such that the housing is configured to be placed in a working position (position shown in fig. 1) within an ambient environment (environment outside of the housing 100 and wall 12, fig. 1; “environment,” para 0044) with the lower end down against a target surface (top surface of workpiece 18, fig. 1); and
a window (optical element 14, fig. 1) integrated into one of the walls of the housing (top wall of housing 100, fig. 1), one side surface of the window (bottom surface of optical element 14, fig. 1) facing an interior of the housing (space inside of the chamber in fig. 1) and the other surface of the window (top surface of optical element 14, fig. 1) exposed to the ambient environment when the housing is in the working position (position shown in fig. 1), the window being of material optically transparent (para 0003) to a light output (beam 16, fig. 1) by a laser equipment (“laser source,” para 0054) such that the window allows the light output from the laser equipment to be transmitted through the ambient environment to the target surface (para 0003) while shielding the laser equipment from any hazardous fumes or hazardous materials created during ablation of the target surface by the laser equipment (fumes from workpiece 18 are captured through opening 30 without affecting the laser source above element 14, fig. 1), and such that integration of the window with said one of the walls prevents escape of the hazardous fumes or hazardous materials from the housing created during ablation of the target surface by the laser equipment (fumes are captured through opening 30 and prevented from reaching the element 14 and the laser source above the optical element 14, paras 0061 and 0063);
the fume and contaminant capture system for capturing and removing the hazardous fumes or hazardous materials from the housing by defining an outlet port (opening 30, fig. 1) and open to an interior of the housing (interior space of fig. 1), whereby when the housing is in the working position (position shown in fig. 1) and negative pressure is created inside the housing via the outlet port (arrow indicates that gas flows out of opening 30, fig. 1; construed such that negative pressure is created at the opening 30), the hazardous fumes or hazardous materials created during ablation of the target surface by the laser equipment are captured and drawn out of the housing while ensuring that the laser equipment is neither exposed nor contaminated by the hazardous fumes or hazardous materials (fumes are captured and drawn out through opening 30, fig. 1; paras 0061 and 0063); and
the housing comprising a top portion (housing 100, fig. 1) through which the window (element 14, fig. 1) extends and the fume and contaminant capture system defines a first inlet port (inlet opening 28, fig. 1) open to the interior of the housing (open to the space inside of fig. 1), the fume and contaminant capture system further comprising an angled ledge (bottom left wall of housing 100, fig. 1) extending into the housing from the top portion of the housing and the housing defining with the top portion a second inlet port (left opening 24, fig. 1) of the fume and contaminant capture system, the second inlet port being adjacent to the window (left opening 24 is adjacent to element 14, fig. 1), and the angled ledge comprising a first surface and a second surface within the housing (bottom wall of housing 100; annotated in fig. 1 below), the first surface being at an angle from the top portion of the housing (construed first surface curves along channel wall 108, annotated fig. 1) and the second surface being parallel to the top portion of the housing (construed second surface is parallel to the top wall of housing 100, annotated fig. 1), the first surface and the second surface being oriented relative to the window so as to direct air drawn into the second inlet port across said one surface of the window (“gas,” para 0057; “air” is not explicitly disclosed in this embodiment; the gas is drawn into channel 110 across the bottom surface of element 14, fig. 1) by directing air using the first surface being at the angle from the top portion of the housing and the second surface being parallel to the top portion of the housing (gas is directed into channel 110 through the walls of housing 100, para 0056).
Meixlsperger, fig. 1 (annotated)
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In this embodiment, Meixlsperger does not explicitly disclose edges of at least a portion of the plurality of walls of the housing making contact against the target surface; hazardous fumes or hazardous materials created during ablation of the target surface; an outlet port connectable to a vacuum system; directing air.
However, in different embodiments, Meixlsperger teaches edges of at least a portion of the plurality of walls of the housing making contact against the target surface (“Alternatively, the chamber 10 may not have a bottom but may be designed as a hood,” para 0054; “lowered onto the workpiece,” para 0028; if the chamber 10 is a “hood” that is “lowered onto the workpiece,” then an “edge” at the bottom of the hood will “make contact” against the top surface of the workpiece); directing air (“annular gap allows the air to flow into the channel simultaneously along the circumference,” para 0014; Meixlsperger teaches using “air” for the “annular gap” embodiment in fig. 2B).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of the fig. 1 embodiment, in view of the teachings of alternative embodiments for a “hood” and in fig. 2B, by using a “hood” for the chamber 10, as taught in paragraph 0054, and by using “air,” as taught in fig. 2B, for the gas, as taught in fig. 1, in order to use a hood without a floor that can be lowered onto a workpiece, so that the chamber 10 does not require a separate door in order to move the workpiece into and out of the chamber and because air is a gas that is readily available and is acceptable for promoting uniform flow along the channel (Meixlsperger, paras 0014, 0028, and 0054).
Meixlsperger does not explicitly disclose hazardous fumes or hazardous materials created during ablation of the target surface (Meixlsperger teaches laser “processing,” and does not explicitly disclose laser ablation); an outlet port connectable to a vacuum system (although Meixlsperger teaches “pipes and pumps” for creating “gas flows,” Meixlsperger does not explicitly disclose a “vacuum system”).
However, in the same field of endeavor of laser-processing removal systems, Gutierrez teaches hazardous fumes or hazardous materials created during ablation of the target surface (“Byproducts of the ablation are removed from the cavity,” para 0008; “removing the fumes and/or the particulates from the cavity through an outlet,” para 0010); an outlet port (outlet 20, fig. 5) connectable to a vacuum system (vacuum 64, fig. 2; para 0059).
Gutierrez, figs. 5-6
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Meixlsperger, in view of the teachings of Gutierrez, by adding a vacuum 64, as taught by Gutierrez, to the outlet 30, as taught by Meixlsperger, and by performing laser ablation, as taught by Gutierrez, as the laser processing, as taught by Meixlsperger, in order to use a vacuum that isolates the surrounding environment from the interior cavity of the collector, thereby enabling a controlled environment for laser ablation so that no byproducts (e.g., particles, fumes) are released to the outside environment (Gutierrez, paras 0041 and 0050), and because it would have been obvious to try using Meixlsperger’ s enclosure 100 in laser ablation because there is a finite set of possibilities in the laser processing of a workpiece and one of ordinary skill in the art would have pursued using the enclosure 100 in laser ablation with a reasonable expectation of success that the fumes produced during laser ablation of a workpiece could be removed using the enclosure 100 (Meixlsperger teaches “laser processing,” paras 0001, 0009, 0025, and 0040).
Regarding claim 23, Meixlsperger teaches the invention as described above but does not explicitly disclose further comprising a contaminant sequestration system associated with the outlet port.
However, in the same field of endeavor of laser-processing removal systems, Gutierrez teaches further comprising a contaminant sequestration system (“filter,” para 0044) associated with the outlet port (outlet 80, fig. 2; a filter is provided to the sources 65 and 66, which are associated with the vacuum 64 that is connected to the outlet 80, fig. 2 and paras 0043-0044).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Meixlsperger to include, further comprising a contaminant sequestration system associated with the outlet port, in view of the teachings of Gutierrez, by adding a filter, as taught by Gutierrez, to the gas supply channel, as taught by Meixlsperger, in order to filter the air, for the advantage of ensuring that no outside fumes are able to contaminate the workpiece.
Regarding claim 26, Meixlsperger teaches wherein the housing (exterior walls of fig. 1, i.e., wall 12 and top of housing 100, fig. 1) comprises an angled inner surface (right side of channel 110, fig. 1; annotated below) disposed on a side of the window opposite the angled ledge (left side of channel 110, annotated in fig. 1 above), the angled inner surface subtending an angle with an inner wall surface (section 116, fig. 1; annotated in fig. 1 below) of the top portion (enclosure 100, fig. 1) and oriented to direct the air directed across said one surface of the window (bottom surface of element 14, fig. 1) downwardly towards the open bottom of the housing (gas is directed towards downwards through channel 114, fig. 1).
Meixlsperger, fig. 1 (annotated)
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Regarding claim 27, Meixlsperger teaches wherein the housing (exterior walls of fig. 1, i.e., wall 12 and top of housing 100, fig. 1) comprises a bottom wall (top of openings 28 and 30, fig. 1) and the fume and contaminant capture system defines a third inlet port (opening between the top of 28 and 30; annotated in fig. 1 below) that is vertically aligned with the window (construed third inlet port is aligned with optical element 14, fig. 1), said third inlet port providing an opening in the bottom wall (opening between the tops of openings 28 and 30, fig. 1) for the laser output (laser beam 16, fig. 1) to contact the target surface (top surface of workpiece 18, fig. 1).
Meixlsperger, fig. 1 (annotated)
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Regarding claim 32, Meixlsperger teaches further comprising the laser equipment (“laser source,” para 0054) disposed at an irradiating position (the laser source is construed as being positioned in the space above element 14 where beam 16 is directed from, fig. 1) spaced from said one of the walls of the housing (top wall of enclosure 100, fig. 1), and the window (element 14, fig. 1) is interposed along an optical path of the light output (beam 16, fig. 1) from the laser equipment.
Regarding claim 41, Meixlsperger teaches a fume and contaminant capture system (fig. 1; “fumes…contamination,” para 0002) comprising:
a housing (exterior walls of fig. 1, i.e., wall 12 and top of housing 100, fig. 1) comprising walls (wall 12 and top wall of housing 100, fig. 1) and an open bottom (bottom of fig. 1 is open at openings 28 and 30, fig. 1) constituting a lower end of the housing (bottom of fig. 1 where openings 28 and 30 are located) such that the housing is configured to be placed in a working position (position shown in fig. 1) within an ambient environment (environment outside of the housing 100 and wall 12, fig. 1; “environment,” para 0044) with the lower end down against a target surface (top surface of workpiece 18, fig. 1); and
a window (optical element 14, fig. 1) integrated into one of the walls of the housing (top wall of housing 100, fig. 1), one surface of the window (bottom surface of optical element 14, fig. 1) facing an interior of the housing (space inside of the chamber in fig. 1) and the other surface of the window (top surface of optical element 14, fig. 1) exposed to the ambient environment when the housing is in the working position (position shown in fig. 1), the window being of material optically transparent (para 0003) to a light output (beam 16, fig. 1) by a laser equipment (“laser source,” para 0054) such that the window allows the light output from the laser equipment to be transmitted through the ambient environment to the target surface (para 0003) while shielding the laser equipment from any fumes and contaminants created during ablation of the target surface by the laser equipment (fumes from workpiece 18 are captured through opening 30 without affecting the laser source above element 14, fig. 1), and such that integration of the window with said one of the walls prevents escape of fumes and contaminants from the housing created during ablation of the target surface by the laser equipment (fumes are captured through opening 30 and prevented from reaching the element 14 and the laser source above the optical element 14, paras 0061 and 0063), and
the fume and contaminant capture system defining an outlet port (opening 30, fig. 1) open to an interior of the housing (interior space of fig. 1), whereby when the housing is in the working position (position shown in fig. 1) and negative pressure is created inside the housing via the outlet port (arrow indicates that gas flows out of opening 30, fig. 1; construed such that negative pressure is created at the opening 30) the fumes and contaminants created during ablation of the target surface by the laser equipment are drawn out of the housing (fumes are captured and drawn out through opening 30, fig. 1; paras 0061 and 0063), the housing comprising a top portion (housing 100, fig. 1) through which the window (element 14, fig. 1) extends and the fume and contaminant capture system defines a first inlet port (inlet opening 28, fig. 1) open to the interior of the housing (open to the space inside of fig. 1), the fume and contaminant capture system further comprising an angled ledge (bottom left wall of housing 100, fig. 1) extending into the housing from the top portion of the housing and the housing defining with the top portion a second inlet port (left opening 24, fig. 1) of the fume and contaminant capture system, the second inlet port being adjacent to the window (left opening 24 is adjacent to element 14, fig. 1), and the angled ledge comprising a first surface and a second surface within the housing (bottom wall of housing 100; annotated in fig. 1 above), the first surface being at an angle from the top portion of the housing (construed first surface curves along channel wall 108, annotated fig. 1) and the second surface being parallel to the top portion of the housing (construed second surface is parallel to the top wall of housing 100, annotated fig. 1), the first surface and the second surface being oriented relative to the window so as to direct air drawn into the second inlet port across said one surface of the window (“gas,” para 0057; “air” is not explicitly disclosed in this embodiment; the gas is drawn into channel 110 across the bottom surface of element 14, fig. 1) by directing air using the first surface being at the angle from the top portion of the housing and the second surface being parallel to the top portion of the housing (gas is directed into channel 110 through the walls of housing 100, para 0056).
In this embodiment, Meixlsperger does not explicitly disclose hazardous fumes or hazardous materials created during ablation of the target surface (Meixlsperger teaches laser welding and does not explicitly disclose laser ablation); an outlet port connectable to a vacuum system; directing air.
However, in a different embodiment, Meixlsperger teaches directing air (“annular gap allows the air to flow into the channel simultaneously along the circumference,” para 0014; Meixlsperger teaches using “air” for the “annular gap” embodiment in fig. 2B).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of the fig. 1 embodiment, in view of the teachings of fig. 2B, by using “air,” as taught in fig. 2B, for the gas, as taught in fig. 1, because air is a gas that is readily available and is acceptable for promoting uniform flow along the channel (Meixlsperger, paras 0014, 0028, and 0054).
Meixlsperger does not explicitly disclose hazardous fumes or hazardous materials created during ablation of the target surface (Meixlsperger teaches laser “processing,” and does not explicitly disclose laser ablation); an outlet port connectable to a vacuum system (although Meixlsperger teaches “pipes and pumps” for creating “gas flows,” Meixlsperger does not explicitly disclose a “vacuum system”).
However, in the same field of endeavor of laser-processing removal systems, Gutierrez teaches hazardous fumes or hazardous materials created during ablation of the target surface (“Byproducts of the ablation are removed from the cavity,” para 0008; “removing the fumes and/or the particulates from the cavity through an outlet,” para 0010); an outlet port (outlet 20, fig. 5) connectable to a vacuum system (vacuum 64, fig. 2; para 0059).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Meixlsperger to include, hazardous fumes or hazardous materials created during ablation of the target surface; an outlet port connectable to a vacuum system, in view of the teachings of Gutierrez, by adding a vacuum 64, as taught by Gutierrez, to the outlet 30, as taught by Meixlsperger, and by performing laser ablation, as taught by Gutierrez, as the laser processing, as taught by Meixlsperger, in order to use a vacuum that isolate the surrounding environment from the interior cavity of the collector, thereby enabling a controlled environment for laser ablation so that no byproducts (e.g., particles, fumes) are released to the outside environment (Gutierrez, paras 0041 and 0050), and because it would have been obvious to try using Meixlsperger’ s enclosure 100 in laser ablation because there is a finite set of possibilities in laser processing of a workpiece and one of ordinary skill in the art would have pursued using the enclosure 100 in laser ablation with a reasonable expectation of success that the fumes produced during laser ablation of a workpiece could be removed using the enclosure 100 (Meixlsperger teaches “laser processing,” paras 0001, 0009, 0025, and 0040).
Regarding claim 42, Meixlsperger teaches wherein the housing (exterior walls of fig. 1, i.e., wall 12 and top of housing 100, fig. 1) comprises an angled inner surface (right side of channel 110, fig. 1) disposed on a side of the window opposite the angled ledge (left side of channel 110, annotated in fig. 1 above), the angled inner surface subtending an angle with an inner wall surface (section 116, fig. 1) of the top portion (enclosure 100, fig. 1) and oriented to direct the air directed across said one surface of the window (bottom surface of element 14, fig. 1) downwardly towards the open bottom of the housing (gas is directed towards downwards through channel 114, fig. 1).
Regarding claim 44, Meixlsperger teaches the invention as described above but does not explicitly disclose further comprising a contaminant sequestration system associated with the outlet port.
However, in the same field of endeavor of laser-processing removal systems, Gutierrez teaches further comprising a contaminant sequestration system (“filter,” para 0044) associated with the outlet port (outlet 80, fig. 2; a filter is provided to the sources 65 and 66, which are associated with the vacuum 64 that is connected to the outlet 80, fig. 2 and paras 0043-0044).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Meixlsperger to include, further comprising a contaminant sequestration system associated with the outlet port, in view of the teachings of Gutierrez, by adding a filter, as taught by Gutierrez, to the gas supply channel, as taught by Meixlsperger, in order to filter the air, for the advantage of ensuring that no outside fumes are able to contaminate the workpiece.
Regarding claim 46, Meixlsperger teaches wherein the housing (exterior walls of fig. 1, i.e., wall 12 and top of housing 100, fig. 1) comprises a bottom wall (top of openings 28 and 30, fig. 1) and the fume and contaminant capture system defines a third inlet port (opening between the top of 28 and 30; annotated in fig. 1 above) that is vertically aligned with the window (construed third inlet port is aligned with optical element 14, fig. 1), said third inlet port providing an opening ((opening between the tops of openings 28 and 30, fig. 1)) in the bottom wall for the laser output (laser beam 16, fig. 1) to contact the target surface (top surface of workpiece 18, fig. 1).
Regarding claim 51, Meixlsperger teaches further comprising the laser equipment (“laser source,” para 0054) disposed at an irradiating position (the laser source is construed as being positioned in the space above element 14 where beam 16 is directed from, fig. 1) spaced from said one of the walls of the housing (top wall of enclosure 100, fig. 1), and the window (element 14, fig. 1) is interposed along an optical path of the light output (beam 16, fig. 1) from the laser equipment.
Regarding claim 52, Meixlsperger teaches the invention as described above but does not explicitly disclose wherein the ablation of the target surface comprises selectively removing a layer of material from underlying substrate material, the layer of material comprising one of a layer of corrosion, a coating, a layer of paint, a biological substance, an organic substance, a toxic substance, and a layer of hazardous material.
However, in the same field of endeavor of laser removal processing systems, Gutierrez teaches wherein the ablation of the target surface comprises selectively removing a layer of material from underlying substrate material (“through-holes in … a fiber-reinforced composite layer,” para 0033), the layer of material comprising one of a layer of corrosion, a coating, a layer of paint, a biological substance, an organic substance, a toxic substance, and a layer of hazardous material (“carbon fiber reinforced epoxy,” paras 0005 and 0007; construed as being a hazardous material).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Meixlsperger to include, using the chamber 10, as taught by Meixlsperger in fig. 1, to machine or ablate perforations of carbon fiber reinforced epoxy, as taught by Gutierrez, in order to remove the byproducts that form when ablating aircraft structural acoustic panels, for the advantage of maintaining appropriate industrial hygiene (Gutierrez, paras 0004-0007).
Claims 22 and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Meixlsperger et al. (DE-102013214925-A1, referencing foreign version for Drawings and provided English translation for written disclosure) in view of Gutierrez et al. (US-20160221121-A1) as applied to claim 21 and 41 above and further in view of Lawrence et al. (WO-9748536-A1).
Regarding claim 22, Meixlsperger teaches the invention as described above but does not explicitly disclose wherein the housing comprises a gasket that along with the open bottom constitutes the lower end of the housing, the gasket extending along a perimeter of the open bottom.
However, in the same field of endeavor of laser-processing removal systems, Lawrence teaches wherein the housing (housing of enclosure 22, fig. 2) comprises a gasket (“flexible rubbing sealing skirt,” page 11, line 10) that along with the open bottom (open face 34, fig. 2) constitutes the lower end of the housing, the gasket extending along a perimeter of the open bottom (page 6, lines 30-33).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Meixlsperger to include, using a rubber sealing skirt, in view of the teachings of Lawrence, by using a rubber material, as taught by Lawrence, around the bottom of the chamber 10, as taught by Meixlsperger, in order to further minimize egress of debris (Lawrence, page 6, lines 30-34 and page 11, lines 9-11; Gutierrez, para 0050).
Lawrence, fig. 2
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Regarding claim 43, Meixlsperger teaches the invention as described above but does not explicitly disclose wherein the housing comprises a gasket that along with the open bottom constitutes the lower end of the housing, the gasket extending along a perimeter of the open bottom.
However, in the same field of endeavor of laser-processing removal systems, Lawrence teaches wherein the housing (housing of enclosure 22, fig. 2) comprises a gasket (“flexible rubbing sealing skirt,” page 11, line 10) that along with the open bottom (open face 34, fig. 2) constitutes the lower end of the housing, the gasket extending along a perimeter of the open bottom (page 6, lines 30-33).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Meixlsperger to include, using a rubber sealing skirt, in view of the teachings of Lawrence, by using a rubber material, as taught by Lawrence, around the bottom of the chamber 10, as taught by Meixlsperger, in order to further minimize egress of debris (Lawrence, page 6, lines 30-34 and page 11, lines 9-11; Gutierrez, para 0050).
Claims 24 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over in view of Meixlsperger et al. (DE-102013214925-A1, referencing foreign version for Drawings and provided English translation for written disclosure) in view of Gutierrez et al. (US-20160221121-A1) as applied to claims 21 and 41 above and further in view of Tsunemi et al. (US-6144010-A).
Regarding claim 24, Meixlsperger teaches wherein the fume and contaminant capture system (fig. 1) defines the first inlet port (inlet opening 28, fig. 1) open to the interior of the housing (space inside fig. 1), and the housing comprises the top portion (enclosure 100, fig. 1), a side portion (walls 12, fig. 1).
Meixlsperger does not explicitly disclose a lip extending inwardly from the side portion at a location spaced above the open bottom of the housing, the lip delimiting a top part of the first inlet port.
However, in the same field of endeavor of laser-processing removal systems, Tsunemi teaches a lip (top of gas inlet pipe 13, fig. 2) extending inwardly from the side portion (right side of container 11, fig. 2) at a location spaced above the open bottom of the housing (bottom of container 11, fig. 2), the lip delimiting a top part of the first inlet port (the top part of the pipe 13 delimits the pipe 13, fig. 2).
Tsunemi, fig. 2
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Meixlsperger to include, a lip extending inwardly from the side portion at a location spaced above the open bottom of the housing, the lip delimiting a top part of the first inlet port, in view of the teachings of Tsunemi, by using a pipe 13 and a nozzle 40, as taught by Tsunemi, to connect with the gas opening 28, as taught by Meixlsperger, in order to jet the gas directly on to the laser beam radiation position, for the advantage of directing the foreign materials downwards, away from the laser window, in order to suppress the foreign materials from attaching to the bottom surface of the window (Tsunemi, column 3, lines 55-64).
Regarding claim 45, Meixlsperger teaches wherein the fume and contaminant capture system (fig. 1) defines the first inlet port (inlet opening 28, fig. 1) open to the interior of the housing (space inside fig. 1), and the housing comprises the top portion (enclosure 100, fig. 1), a side portion (walls 12, fig. 1).
Meixlsperger does not explicitly disclose a lip extending inwardly from the side portion at a location spaced above the open bottom of the housing, the lip delimiting a top part of the first inlet port.
However, in the same field of endeavor of laser-processing removal systems, Tsunemi teaches a lip (top of gas inlet pipe 13, fig. 2) extending inwardly from the side portion (right side of container 11, fig. 2) at a location spaced above the open bottom of the housing (bottom of container 11, fig. 2), the lip delimiting a top part of the first inlet port (the top part of the pipe 13 delimits the pipe 13, fig. 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Meixlsperger to include, a lip extending inwardly from the side portion at a location spaced above the open bottom of the housing, the lip delimiting a top part of the first inlet port, in view of the teachings of Tsunemi, by using a pipe 13 and a nozzle 40, as taught by Tsunemi, to connect with the gas opening 28, as taught by Meixlsperger, in order to jet the gas directly on to the laser beam radiation position, for the advantage of directing the foreign materials downwards, away from the laser window, in order to suppress the foreign materials from attaching to the bottom surface of the window (Tsunemi, column 3, lines 55-64).
Claim 53 is rejected under 35 U.S.C. 103 as being unpatentable over Meixlsperger et al. (DE-102013214925-A1, referencing foreign version for Drawings and provided English translation for written disclosure) in view of Gutierrez et al. (US-20160221121-A1) as applied to claim 21 above and further in view of Chandratillake et al. (WO-9527986-A1).
Meixlsperger teaches the invention as described above but does not explicitly disclose wherein the hazardous fumes or hazardous materials comprises carcinogens, lead, radioactive materials, biologically hazardous materials, bacteria, mold, or viruses.
However, in the same field of endeavor of using lasers to remove grout, Chandratillake teaches wherein the hazardous fumes or hazardous materials comprises carcinogens, lead, radioactive materials (“radioactive material,” page 7), biologically hazardous materials, bacteria, mold, or viruses.
Chandratillake, fig. 1
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Meixlsperger to include, wherein the hazardous fumes or hazardous materials comprises carcinogens, lead, radioactive materials, biologically hazardous materials, bacteria, mold, or viruses, in view of the teachings of Chandratillake, using the chamber 10, as taught by Meixlsperger in fig. 1, to remove radioactive material, as taught by Chandratillake, because for safety reasons, these materials produced by chemical and nuclear industries should be removed in order to prevent people from becoming contaminated (Chandratillake, page 1).
Response to Argument
Applicant's arguments filed in the Appeal Brief filed 6 May 2026 have been fully considered, but they are not persuasive.
Meixlsperger and Gutierrez, solely or in combination, fail to teach all the elements of independent claims 21 and 41
Pages 13-14 of the Appeal Brief describe how Meixlsperger teaches using “air” in the figs. 2A and 2B embodiment and not in the fig. 1 embodiment. The examiner was persuaded by this argument. The examiner has revised the rejections for claims 21 and 41 to explain why it would be obvious to one of ordinary skill in the art to use the “air” from the figs. 2A and 2B embodiment as the “gas” in the fig. 1 embodiment.
The examiner agrees with the Applicant’s argument on page 15 of the Appeal Brief that Gutierrez (the modifying reference) does not teach “directing air drawn into the second inlet port across said one surface of the window.” However, the examiner does not rely on Gutierrez to teach this limitation but instead relies on Meixlsperger (the primary reference).
Page 17 of the Appeal Brief references Gutierrez and states that the “byproducts” taught by Gutierrez are not hazardous. The Applicant defines “hazardous” as meaning “dangerous.” The Applicant states that the “byproducts” taught by Gutierrez do not rise to level of being “dangerous” because the byproducts taught by Gutierrez simply “distort or reduce the intensity of the laser beam.”
The examiner did not find this argument persuasive because claims 21 and 41 are directed to a “fume and contaminant capture system,” which the examiner understands to be an apparatus. Respectfully submit that it is the structure of the apparatus, which must be considered, and not the intended use of the apparatus (removing hazardous byproducts). The manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
The examiner also disagrees with the Applicant’s opinion that the byproducts taught by Gutierrez do not rise to the level of being “dangerous.” Gutierrez teaches that the “byproducts” are “particles” that result when “carbon fiber reinforced epoxy” is ablated from the acoustic panels of aircraft. Gutierrez teaches collecting these byproducts in order to “maintain appropriate industrial hygiene” (paragraph 0007). Thus, based on what Gutierrez teaches, if these particles are not collected, then the industrial hygiene requirements are not met, and the particles would become a danger to workers, according to industrial hygiene standards.
Pages 17-18 of the Appeal Brief repeats the argument on page 15 that Gutierrez (the modifying reference) does not teach “directing air drawn into the second inlet port across said one surface of the window.” Again, the examiner agrees with the Applicant, but instead of Gutierrez, the examiner relies on Meixlsperger to teach this limitation.
Pages 18-19 reference four objectives from the Specification. The four objectives are (1) collection of hazardous fumes or hazardous materials, (2) cleanliness of the window, (3) preventing hazardous fumes or hazardous materials from contacting the window, and (4) cooling the window. Of these four objectives, it appears that only the first objective is claimed. Perhaps, the Applicant is considering adding the remaining objectives to the claims? If so, it is not clear how this functional language would result in a structural difference in comparison to that taught by the prior-art references.
The Examiner failed to establish a prima facie case of obviousness
Page 20 of the Appeal Brief states that Meixlsperger is non-analogous art, because Meixlsperger is directed towards laser welding, soldering or sintering, whereas the Applicant’s invention is directed to laser ablation.
Although the examiner agrees with the Applicant that Meixlsperger is not in the same field of endeavor as the invention that is claimed by the Applicant, the examiner disagrees that Meixlsperger should be considered non-analogous art. The examiner determined that the field of endeavor of the present application is laser-processing removal systems. Meixlsperger does not teach a laser processing removal system. Therefore, Meixlsperger is not in the same field of endeavor as the Applicant’s claimed invention. However, Meixlsperger is pertinent to the same problem as that addressed in the Instant Application, which is the “removal of contaminants.” Specifically, Meixlsperger teaches that “it is therefore an object of the invention to provide a device and a method in which the contamination of an optical element can be reduced and the system running time can be increased” (paragraph 0007). Similarly, the Specification of the Instant Application discloses that “the laser system, scanner, optics, robotics, and functional components may get contaminated by laser-ablated hazardous materials which may be time-consuming, expensive, difficult, or in some cases impossible to remove.” Thus, because both Meixlsperger and the Instant Application are focused on the problem of the removal of contaminants for the laser equipment, the examiner determined that Meixlsperger is analogous art for the claimed invention.
Page 21 of the Appeal Brief states that the examiner did not consider the level of ordinary skill in the pertinent art because there is “no statement in the Office Action regarding these attributes.” However, “if the only facts of record pertaining to the level of skill in the art are found within the prior art of record, the court has held that an invention may be held to have been obvious without a specific finding of a particular level of skill where the prior art itself reflects an appropriate level” (MPEP 2141.03.II). In other words, a statement is not required because the prior art itself already reflects an appropriate level of ordinary skill.
Page 21 of the Appeal Brief states that the examiner “failed to show a reasonable motivation to combine or modify the prior art.” However, the Applicant then appears to contradict this statement, repeating the motivation that the examiner provided in the Office action for combining Meixlsperger with Gutierrez. Therefore, the examiner respectfully disagrees with the Applicant’s initial statement that a “reasonable motivation” was not provided. Instead, the examiner submits that a reasonable motivation for combining Meixlsperger with Gutierrez was provided, which the Applicant appears to acknowledge despite making this initial statement.
Page 22 of the Appeal Brief states that “Gutierrez does not teach the creation of hazardous fumes or hazardous material during ablation.” This argument appears to be a repeat of the argument provided on page 17 of the Appeal Brief (please see the counterargument that has already been provided regarding the “byproducts” that are taught by Gutierrez).
Page 22 of the Appeal Brief states that “Meixlsperger already has a controlled environment and therefore there would be no reason for a skilled artisan to modify Meixlsperger with Gutierrez.” In the rejection above, the examiner relies on Gutierrez to teach a “vacuum source.” Although Meixlsperger does not teach a “vacuum source,” Meixlsperger teaches “pipes or pumps” in order to create a gas discharge device. The examiner submits that Meixlsperger probably uses a vacuum source with the “pump.” Nonetheless, just to make certain that this limitation is covered, the examiner relies on Gutierrez to teach a “vacuum source,” which is an obvious modification to those of ordinary skill in the art.
It appears that the Applicant is under the impression that when examining the claims, the examiner should first determine whether there is some deficiency in the prior art, which must be covered by a modifying reference (this appears to be the Applicant’s rationale). However instead of determining whether there is a deficiency in the prior art, the examiner actually considers the differences between the claimed invention and the prior art. Based on these differences, the examiner determines whether these differences amount to an obvious modification for those of ordinary skill. Meixlsperger does not explicitly disclose a “vacuum source.” Based on the Gutierrez reference, respectfully submit that applying a vacuum source to a gas outlet opening (which Meixlsperger already teaches) is an obvious modification for those of ordinary skill in the art.
Page 23 of the Appeal Brief states that because Meixlsperger teaches a chamber wall 12, then a vacuum source is not needed. The examiner disagrees. Instead, respectfully submit that a vacuum source is still needed in order to generate the gas flows that are shown in fig. 1 of Meixlsperger.
In response to the Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Page 23 of the Appeal Brief states that the examiner did not provide a factual basis for the obviousness rejection. However, in the rejection above, mappings were provided for the prior art references. These mappings are factual based on the actual references and are not based on the examiner’s opinion.
On page 24 of the Appeal Brief, the Applicant states that the finite number of possibilities in laser processing are not limited to laser welding or laser ablation but that these finite possibilities include laser welding, laser soldering, laser ablation, laser cutting, laser drilling, laser stripping, laser brazing, laser marking, laser engraving, laser treatments, laser surface modification, cladding, laser sintering, and of course laser ablation. The examiner submits that within laser processing, the laser is either being used to join or weld objects together, e.g., laser welding, laser soldering, laser brazing, cladding, and laser sintering (additive manufacturing), or the laser is being used to ablate a surface, e.g., laser ablation, laser drilling, laser stripping, laser marking, laser engraving, laser treatments, and laser surface modification. Regardless, whether there are two finite possibilities or fourteen finite possibilities in laser processing, the number of possibilities is still finite, and one of ordinary skill would have reasonably expected a level of success in using the enclosure 100, as taught by Meixlsperger, in a laser ablation process, as taught by Gutierrez.
For the above reasons, rejections to the pending claims are respectfully sustained by the examiner.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERWIN J WUNDERLICH whose telephone number is (571)272-6995. The examiner can normally be reached Mon-Fri 7:30-5:30.
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/ERWIN J WUNDERLICH/Examiner, Art Unit 3761 6/17/2026 /EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761
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