DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 24, 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the amendment filed on March 24, 2026, claims 19 – 25, 27 – 31, 33 – 36 are pending. Claims 19, 34, 35, 36 have been amended and claims 1 – 18, 26, 32 have been canceled.
Claim Rejections - 35 USC § 112
The rejections of the claims under 35 USC § 112 in the previous Office Action are withdrawn due to Applicant amendment.
Claim Rejections - 35 USC § 103
The rejections of the claims under 35 USC § 103 in the previous Office Action are withdrawn due to Applicant amendment.
Claim(s) 19 – 24, 28 – 30, 33 – 36 are rejected under 35 U.S.C. 103 as being unpatentable over He CN206305135U (hereafter “He”, machine translation provided) in view of Ramsey US 2005/0170280 A1 (hereafter “Ramsey”), Hosaka JP 2006184088A (hereafter “Hosaka”, machine translation provided) and Ranalli et al. US 5662762 (hereinafter “Ranalli”).
Regarding claim 19, 20, 21, 22, 23, 24, 28, 29, 30, 34, 35, 36:
He is directed to a laser cleaning device and uses of the laser cleaning device (page 1 “Technical field”). He discloses a method comprising: placing a plurality [bulk] of small size parts in a tray parts to be cleaned into an infeed zone of their laser cleaning device (page 3 5th paragraph – 9th paragraph; Fig. 1); conveying the parts to a work zone by a conveying mechanism (page 1 “The contents of the invention”, page 2 15th – 17th paragraph, page 3 5th paragraph); and batch cleaning [discontinuous cleaning, meeting claim 22] the part in the work zone by a laser beam above the parts and conveying mechanism that scans the surfaces with fine spots at different locations [continuous laser irradiation] (page 1 “The contents of the invention”, page 3 5th – 9th paragraphs).
He does not expressly teach:
a step of introducing the plurality of objects into a mixing device selected from a conveyor screw, a caterpillar belt, a troughed belt, a swivel drum and a rotary drum;
that the cleaning is simultaneous with a mixing of the plurality of surfaces of the plurality of objects;
does not expressly teach a step of subsequently coating the plurality of cleaned objects; and that the position of the individual objects relative to one another is changed during laser irradiation such that new surfaces are continuously exposed to laser irradiation; and
wherein at least a portion of the cleaning takes place outside a focus of the laser radiation.
With regards to the step of subsequently coating the plurality/bulk of cleaned objects:
Ramsey is directed to environmentally friendly coatings for thermally sensitive surfaces and/or rusted surfaces and methods of applying the coating (Abstract). Ramsey discloses that it is known in the art that any product that is being refurbished/recycled/reused with any new coatings may require general surface cleaning and removal of rust and other oxidation products ([0004], [0146], [0068] – [0069]; Fig. 1). Recleaning and recoating increases the recyclability of coated articles and thus reduces waste of reusable products that would otherwise go into landfills ([0062]). The coating provided in recoating may be opaque, hard, glossy, corrosion resistant, abrasion resistant or any combinations thereof [meeting claim 20] ([0018]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of He by including a step of subsequently coating the plurality/bulk of objects because Ramsey teaches that cleaning and recoating processes together increases the recyclability of previously coated articles that need refurbishing and thus reduces the waste of products that would otherwise go into landfills.
With regards to a step of introducing a step of introducing the plurality of objects into a mixing device selected from a conveyor screw, a caterpillar belt, a swivel drum and a rotary drum; and that the position of the individual objects relative to one another is changed during laser irradiation such that new surfaces are continuously exposed to laser irradiation:
In analogous art, Hosaka is directed to the decontamination and cleaning of radiaoactive solid waste discharged from various nuclear facilities. Such radioactive solid waste includes various materials such as plastics, paper, rubber, metal, concrete, ect ([0002]). In an embodiment (Fig. 3 – 6), Hosaka discloses a laser cleaning device [mixing device] that includes a laser oscillator, laser transmission system, laser irradiation unit and suction collection system; the laser irradiation system comprises an annular drum, duct and a uniaxial rotating mirror ([0015] – [0016]). Hosaka further discloses a method ([0018] – [0024], [0029] – [0034], [0038] – [0041]) comprising: transporting shredded radioactive solid waste inside the annular space of the drum ([0021]); stirring the shredded radioactive solid waste by rotating an outer cylinder of the drum [rotary drum] ([0021]); irradiating the stored shredded radioactive solid waste with a laser beam while the stored shredded radioactive solid waste is being stirred [changing position of individual objects such that new surfaces are continuously exposed to laser irradiation during laser irradiation] ([0022]); and removing radioactive contamination from the shredded solid waste by the action of the induced plasma ([0022] – [0023]). The action of stirring while irradiating with a laser allows for efficient removal of radioactive contamination with a small amount of secondary waste ([0006], [0025]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of He in view of Ramsey by replacing the conveying means of He with that of Hosaka and conveying the small parts in bulk through a rotation drum while irradiating with a laser because Hosaka suggests the action of rotating the small parts while irradiating with a laser beam allows for more efficient removal of contaminants from the small parts. Thus the limitation of changing the relative position of objects during laser irradiation such that new surfaces are continuously exposed to laser irradiation is met.
With regards to at least a portion of the cleaning takes place outside a focus of the laser radiation:
Ranalli is directed to a laser-based system and method for stripping coatings [cleaning] from substrates via laser ablation (Abstract; col 1 lines 5 – 10). Ranalli discloses that their method comprises: providing an apparatus having a laser isolating tube for feeding in a laser beam 16 (col 4 lines 4 – 15) and a focusing lens 24 set to have a 17.5 inch [444.5 mm, meeting claim 35 and 36s’ focus range limitation where focus range is greater than 25 mm] effective focal length [focus range] and positioned within a nozzle (col 3 lines 40 – 65; Fig. 1, 2); and directing the laser beam 16 towards the focusing lens 24 and towards a coating 12 that is meant to be stripped [cleaned] (col 2 lines 3 – 20), wherein the laser beam is defocused [outside of a focus] when it irradiates the coating (col 1 lines 35 – 50; col 2 lines 35 – 47; claim 9). Ranalli discloses that irradiating surfaces to be stripped with a defocused beam, helps minimize/avoid substrate damage by limiting excessively localized heat (col 1 lines 30 – 50, col 3 lines 55 – 65). Additionally, Ranalli discloses that the laser beam is preferably derived from a CO2 laser [meeting claim 36’s emitting limitation]
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of He in view of Ramsey and Hosaka to irradiate the surfaces with a defocused beam – such as with the laser source and the focal length disclosed in Ranalli – and therefore clean outside a focus of the laser radiation, because Ranalli teaches that de-focused laser beams that are used for cleaning help minimize damage to underlying substrates.
Regarding claim 31:
He in view of Ramsey and further in view of Hosaka does not expressly teach that the irradiation is carried among the various recited options of claim 31.
Hosaka discloses in an alternate embodiment that the laser irradiation unit may comprise a plurality of total reflection mirrors that provide a band of laser light irradiation [several lasers] that irradiate in a near-parallel/ slightly altered angle (Fig 5; [0028] – [0034]), thus repeatedly exposing the radioactive solid waste to the path of irradiation ([0031] – [0032]), thus enhancing cleaning.
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of He in view of Ramsey by replacing the conveying means of He with that of Hosaka and conveying the small parts in bulk through a rotation drum while irradiating with a laser because Hosaka suggests the action of rotating the small parts while irradiating with a laser beam allows for more efficient removal of contaminants from the small parts.
Additionally, the introduction of multiple laser ports/lasers amount to a duplication of parts and steps to achieve the same function as with one laser port/laser. Absent a showing of criticality, a prima facie case of obviousness exists where claim limitations amount to a mere duplication of parts/steps. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) .
Regarding claim 33:
He discloses that a control unit is used to control laser irradiation position by galvanometer and focusing [monitoring and control] (page 1 “The contents of the invention”, page 2 2nd paragraph, page 3 1st paragraph – 3rd paragraph).
He in view of Ramsey and further in view of Hosaka does not expressly teach that the irradiating is carried out discontinuously in a process atmosphere and with further plasma irradiation.
However, Hosaka discloses carrying out decontamination with a pulse laser [discontinuous laser irradiation] ([0022]). The pulse laser aids in cleaning by inducing plasma [and thus plasma irradiation treatment] when the laser irradiation strikes an object, thus facilitating removal by evaporation. The drum atmosphere can be construed as a process atmosphere.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over He in view of Ramsey, Hosaka, and Ranalli as applied to claims 19 – 24, 28 – 30, 33 – 36 above, and further in view of Hunziker US 4,218,854 (hereafter “Hunziker”).
Regarding claim 25:
He discloses that small size parts may be cleaned, but does not expressly teach that the small size parts are a screw, nut, bolt, rivet, stamped part, stamped-bent part, cast part, pressed part or a combination thereof.
Hunziker is directed to apparatus for transporting, agitating, rotating and treating discrete objects/commodities such as metallic parts (Abstract). Hunziker discloses that the commodities that may be treated include fittings and castings [cast parts] (col 1 lines 5 – 15, col 5 lines 65 – 67, col 12 lines 34 – 52).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of He, Ramsey, Hosaka and Ranalli to treat cast parts with the prior art method because Hunziker teaches that such parts would benefit from cleaning treatments.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over He, Ramsey, Hosaka and Ranalli as applied to claims 19 – 24, 28 – 30, 33 – 36 above, and further in view of Champion US 4058868 A (hereafter “Champion”).
Regarding claim 27:
He in view of Ramsey and further in view of Hosaka does not expressly teach that the cleaning is carried out continuously.
However, Hosaka discloses that radioactive solid waste is processed in a continuous work flowpath involving conveying radioactive solid waste to a shredding device using a conveying device, and then transported by another of the same conveying device to the laser cleaning device, and then subsequently conveyed again to general waste processing after confirmation that radioactive contamination is sufficiently removed (Fig. 2; [0022], [0024]).
In analogous art, Champion is directed to the cleaning and polishing of capsules using an apparatus comprising a rotating drum having entry and exit end walls [therefore enclosed], an inlet chute an exit chute (Abstract; col 2 line 25 – col 3 line 5, col 3 lines 20 – 40, col 4 lines 1 – 35). Capsule material [corresponding to bulk material] Champion discloses that capsules are continuously delivered to the rotating drum via the inlet chute and continuously discharged via the exit chute (col 5 lines 30 – 50). Champion discloses that the use of the rotating drum is an improvement compared to hand polishing of capsules as it saves labor (col 1 lines 10 – 27), and thus suggests that continuous operation of the cleaning apparatus removes dust in an economically advantageous way (col 1 lines 30 – 40).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of He, Ramsey, Hosaka and Ranalli by operating the cleaning step in a rotating drum as taught by Hosaka that is modified for continuous operation by having entry and exit chutes because Champion suggests that continuous operation allows for economic processing of bulk material compared to other prior art methods.
Additionally, a prima facie case of obviousness exists where batch operations are modified to be continuous. See In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963).
Response to Declaration
The declaration under 37 CFR 1.132 filed 24 March 2026 (hereinafter the “December Declaration”) is insufficient to overcome the rejection of claims 19 – 24, 28 – 30, 33 – 36 based upon the rejection of the claims under 35 USC 103 as set forth in the last Office action because:
The declaration fails to set forth facts commensurate in scope with the claimed subject matter to overcome the rejections on record. The declaration sets forth the opinion of Erik Heller, a joint inventor, concerning the propriety of the rejections of the claims under 35 USC §103. Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962). Although an affidavit or declaration which states only conclusions may have some probative value, such an affidavit or declaration may have little weight when considered in light of all the evidence of record in the application. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973).
The declaration establishes that it is the opinion of the joint inventor that the claimed invention demonstrates unexpected results in contrast to the prior art of record (see page 2 item 4).
The declaration sets forth the following facts:
Descriptions of tests of laser treatment using flat samples of C45 steel and aluminum foil contaminated with oil films, oxide and scale layers (see page 2 items 5 – 6); in particular with a laser focus on the surface (which it equates to 0 mm), 15 mm, 30mm, 45mm or 55mm; and
report that sample surfaces that are cleaned at distances of 15 mm, or 30 mm, 45mm were free of scale and visually detectable oxides, and that surface tension and surface structure were altered by treatment (see page 2 items 6 and 7).
The Examiner notes that the results of surface treatment at 0 mm focal position were not reported.
The declaration then sets forth the following opinions of the joint inventor:
The tests demonstrate unexpected results, and that nothing in the previously cited prior art would have expected such cleaning performance except when the focus of the laser is placed directly on the sample surface.
With regards to the relationship of the information contained within the Declaration in comparison to the prior art of record, the Examiner notes that the proffered tests are predicated on specific distances of focal position that are not reflected in the claims, with the possible exception of claims 35 and 361. No basis for the “high energy densities” is provided. Furthermore, the Declaration’s tests are dissimilar with the steps of the claimed method, which involves the mixing of objects. Accordingly, the proffered evidence contained within the Declaration is not commensurate in scope with the claimed subject matter.
Additionally, the Declaration’s facts and results appear to indicate a benefit for defocused beams, where the laser focus is not trained onto a dirty substrate. Ranalli indicate the benefits of defocused beams for the purpose of cleaning substrates with much greater clarity.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Response to Arguments
Applicant’s arguments, see bottom of page 6 to 2nd paragraph of page 7, filed March 24, 2026, with respect to the rejection(s) of the claim(s) under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Ranalli.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kell et al. US 2014/0076864 A1, particularly paragraphs [0052] – [0053]
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
1 It is unclear whether the Declaration’s description of “focal position” is the same or a species within the claim limitation “focal range”.
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