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 .
Response to Arguments
The 35 U.S.C. 112(b) rejection of claims 5-9 have been withdrawn due to the amendment of claim 1 to include “first and second rotational axis”.
Applicant’s arguments, see pages 7-9, filed September 22, 2025, with respect to the rejection(s) of claim 1 under 35 USC § 102 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 Therefore, the rejection has been withdrawn.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 Douglas-Hamilton et al. US 10,816,786 B2.
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 (i.e., changing from AIA to pre-AIA ) 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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Tagami et al. US 2013/0070167 A1 in view of Douglas-Hamilton et al. US 10,816,786 B2.
Regarding claim 1, Tagami discloses an optical device comprising a carrier (Fig. 1, Ref. 3), an optical element (Fig. 1, Ref. 1) and a radiation sink (Fig. 1, Ref. 4), wherein - the optical element is mounted on the carrier (Fig. 1, Refs. 1 and 3), the optical element is movably attached to the carrier (Fig. 1, Ref. 2; Para. 20), the carrier has a recess (Fig. 2, Ref. 7a), wherein the optical device is arranged to interact with electromagnetic radiation (Para. 53, “laser beam”), dividing the electromagnetic radiation in a first portion (Fig. 8, Ref. 101) and a second portion (Fig. 8, Ref. 102), the optical element is arranged to deflect the first portion in a definable direction (Fig. 8, Ref. 101), and the second portion impinges onto the radiation sink (Fig. 8, Refs. 102 and 4).
Tagami does not disclose at least two bearings which are arranged to bear the optical element on the carrier, each bearing providing a restoring force against rotation of the optical element around a respective first and second rotational axis.
However in the same field of endeavor, Douglas-Hamilton teaches at least two bearings which are arranged to bear the optical element on the carrier, each bearing providing a restoring force against rotation of the optical element (Col. 5, Lines 50-56 teaches multiple springs providing a restorative force on the objective body, equivalent to the bearing definition in the applicant’s specification on page 12, line 19) around a respective first and second rotational axis (Col. 4, Lines 39-46 teach moving the path by 90 degrees indicating a second axis).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Douglas-Hamilton to improve the reproducibility of the positioning of the frame.
Regarding claim 2, Tagami discloses wherein the electromagnetic radiation and the first portion and/or the second portion (Fig. 8, Ref. 102) is/are incident into the recess (Fig. 8, Ref. 7a).
Regarding claim 3, Tagami discloses wherein the recess extends completely through the carrier from a first side to a second side, wherein the first side is opposed to the second side (Fig. 2 shows how through-hole Ref. 7a extends through the recess of the carrier).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Tagami et al. US 2013/0070167 A1 in view of Douglas-Hamilton et al. US 10,816,786 B2 and Ito et al. US 20190198322 A1.
Regarding claim 4, Tagami does not specifically disclose wherein the carrier and the radiation sink are connected by a thermally insulating material, wherein the thermal conductivity of the thermally insulating material is lower than the thermal conductivity of the radiation sink.
However in the same field of endeavor, Ito teaches wherein the carrier and the radiation sink are connected by a thermally insulating material (Fig. 9, Ref. 58), wherein the thermal conductivity of the thermally insulating material is lower than the thermal conductivity of the radiation sink (It is inherent that an insulative material would have a lower thermal conductivity than radiation sink).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Ito to prevent a deformation of the optical element or a positional deviation.
Claims 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tagami et al. US 2013/0070167 A1 in view of Douglas-Hamilton et al. US 10,816,786 B2 and Kane et al. US 8752969 B1.
Regarding claim 5, Tagami discloses wherein the mirror is fixedly attached to a chassis (Fig. 8, Ref. 1).
Tagami does not disclose a chassis which is arranged to move with the mirror, wherein the mirror and the chassis form a movable portion of the optical device, which moves with respect to a fixed portion of the optical device, and a distance between a center of gravity of the movable portion and the first rotational axis is not more than 0.5 mm and a distance between a center of gravity of the movable portion and the second rotational axis is not more than 0.5 mm.
However in the same field of endeavor, Kane teaches a chassis which is arranged to move with the mirror (Fig. 4A), wherein the mirror and the chassis form a movable portion of the optical device (Fig. 4A, Refs. 11 and 15), which moves with respect to a fixed portion of the optical device (Fig. 4A, Refs. 14 and 19), and a distance between a center of gravity of the movable portion and the first rotational axis is not more than 0.5 mm and a distance between a center of gravity of the movable portion and the second rotational axis is not more than 0.5 mm (Fig. 4A wherein the mirror moves through an axis at the center of gravity).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Kane to steer the beam with a low friction and faster response.
Regarding claim 6, Tagami does not disclose a bearing which is arranged to bear the movable portion on the carrier, wherein the bearing comprises at least two bending beams, an actuator which is arranged to generate forces which effect the rotation around the first axis of rotation and the rotation around the second axis of rotation independently of one another, wherein - the actuator comprises a coil which is fixedly attached to the movable portion, and - the bending beams comprise electrical contacts of the coil.
However in the same field of endeavor, Kane teaches a bearing which is arranged to bear the movable portion on the carrier, wherein the bearing comprises at least two bending beams (Col. 3, Lines 41-57), an actuator which is arranged to generate forces which effect the rotation around the first axis of rotation and the rotation around the second axis of rotation independently of one another, wherein - the actuator comprises a coil which is fixedly attached to the movable portion, and - the bending beams comprise electrical contacts of the coil (Col. 14, Lines 52-56).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Kane to steer the beam with a low friction and faster response.
Regarding claim 7, Tagami does not disclose an actuator which is arranged to generate forces which effect the rotation around the first axis of rotation and the rotation around the second axis of rotation independently of one another, wherein - the actuator comprises a coil which is fixedly attached to the carrier, and - the thermal resistance between the coil and the movable portion is higher than the thermal resistance between the coil and the carrier.
However in the same field of endeavor, Kane teaches an actuator which is arranged to generate forces which effect the rotation around the first axis of rotation and the rotation around the second axis of rotation independently of one another (Col. 14, Lines 52-56), wherein - the actuator comprises a coil (Fig. 1, Ref. 12) which is fixedly attached to the carrier (Col. 5, Lines 49-50), and - the thermal resistance between the coil and the movable portion is higher than the thermal resistance between the coil and the carrier (Col. 4, Lines 51-59).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Kane to steer the beam with a low friction and faster response.
Regarding claim 8, Tagami does not disclose wherein the optical element has a first resonance frequency (f1) for rotation around the first rotational axis and a second resonance frequency (f2) for rotation around the second rotational axis, wherein the first resonance frequency (f 1) differs from the second resonance frequency (f2) by maximum 10 Hz, preferably 1 Hz.
However in the same field of endeavor, Kane teaches wherein the optical element has a first resonance frequency (f1) for rotation around the first rotational axis and a second resonance frequency (f2) for rotation around the second rotational axis, wherein the first resonance frequency (f 1) differs from the second resonance frequency (f2) by maximum 10 Hz, preferably 1 Hz (Fig. 4A, Refs. 11 and 15 shows the mirror disposed within a ring with identical radius of the rotational axes resulting in an identical resonant frequency).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Kane to steer the beam with a low friction and faster response.
Regarding claim 9, Tagami does not disclose a measurement unit which is arranged to measure the deflection of the optical element, wherein the measurement unit is arranged to measure rotation of the optical element around the first rotational axis and rotation around the second rotational axis.
However in the same field of endeavor, Kane teaches a measurement unit which is arranged to measure the deflection of the optical element, wherein the measurement unit is arranged to measure rotation of the optical element around the first rotational axis and rotation around the second rotational axis (Col. 14, Lines 46-52).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Kane to steer the beam with a low friction and faster response.
Regarding claim 10, Tagami does not disclose wherein the measurement unit is arranged to generate a measurement beam which impinges on the movable portion, the movable portion is arranged to reflect the measurement beam, and the measurement unit comprises a detector, wherein the detector is arranged to detect the reflected measurement beam, wherein a location at which the reflected measurement beam impinges on the detector depends on the deflection of the optical element, and the measurement unit is arranged to determine the deflection of the optical element from the location.
However in the same field of endeavor, Kane teaches wherein the measurement unit is arranged to generate a measurement beam which impinges on the movable portion, the movable portion is arranged to reflect the measurement beam, and the measurement unit comprises a detector, wherein the detector is arranged to detect the reflected measurement beam, wherein a location at which the reflected measurement beam impinges on the detector depends on the deflection of the optical element, and the measurement unit is arranged to determine the deflection of the optical element from the location (Col. 15, Lines 4-12).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Kane to steer the beam with a low friction and faster response.
Regarding claim 11, Tagami does not disclose wherein the measurement beam impinges on a side of the optical element which is opposed to the side on which the beam impinges during intended operation.
However in the same field of endeavor, Kane teaches wherein the measurement beam impinges on a side of the optical element which is opposed to the side on which the beam impinges during intended operation (Fig. 16, Ref. 68).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Kane to steer the beam with a low friction and faster response.
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Tagami et al. US 2013/0070167 A1 in view of Douglas-Hamilton et al. US 10,816,786 B2, Milanovic et al. US 10338377 B1, and Grapov et al. US 10751835 B2.
Regarding claim 12, Tagami does not disclose a laser source, wherein the laser source is arranged to emit a laser beam having an energy of at least 0.5 KW, the optical device is arranged to interact with the laser beam, wherein the interaction separates the laser beam in a first portion and a second portion, the first portion is deflected in a definable direction, and the first portion of the laser beam has a higher optical power than the second portion of the laser beam.
However in the same field of endeavor, Grapov teaches a laser source, wherein - the laser source is arranged to emit a laser beam having an energy of at least 0.5 KW (Col. 4, Lines 6-12) - the optical device is arranged to interact with the laser beam (Fig. 1, Refs. 110 and 112).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Grapov to use a laser to form a weld bead along at least one axis.
However in the same field of endeavor, Milanovic teaches wherein the interaction separates the laser beam in a first portion and a second portion, the first portion is deflected in a definable direction, and - the first portion of the laser beam has a higher optical power than the second portion of the laser beam (Fig. 3B, Ref. 305; Col. 6, Lines 32-35 wherein the heat sink on the reflective surface will absorb a portion of the laser beam).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Milanovic to dissipate heat.
Regarding claim 13, Tagami does not disclose wherein the optical device is arranged to deflect the first portion along a linear, circular or arbitrary orbit.
However in the same field of endeavor, Grapov teaches wherein the optical device is arranged to deflect the first portion along a linear, circular or arbitrary orbit (Figs. 2A-2D).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Grapov to use a laser to form a weld bead along at least one axis.
Regarding claim 14, Tagami does not disclose a displacement device which is arranged to move the workpiece and the optical device with respect to each other in a definable direction with a definable velocity.
However in the same field of endeavor, Grapov teaches a displacement device which is arranged to move the workpiece and the optical device with respect to each other in a definable direction with a definable velocity (Col. 4, Lines 2-4).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Grapov to use a laser to form a weld bead along at least one axis.
Regarding claim 15, Tagami does not disclose wherein the first portion of the laser beam is arranged to heat the workpiece, for cutting, welding, engraving or imprinting the workpiece.
However in the same field of endeavor, Grapov teaches wherein the first portion of the laser beam is arranged to heat the workpiece, for cutting, welding (Col. 1, Lines 42-48), engraving or imprinting the workpiece.
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Grapov to use a laser to form a weld bead along at least one axis.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Tagami et al. US 2013/0070167 A1 in view of Lenigk et al. US 2017/0211982 A1.
Regarding claim 16, Tagami discloses an optical device comprising a carrier (Fig. 1, Ref. 3), an optical element (Fig. 1, Ref. 1) and a radiation sink (Fig. 1, Ref. 4), wherein - the optical element is mounted on the carrier (Fig. 1, Refs. 1 and 3), - the optical element is movably attached to the carrier (Fig. 1, Ref. 2; Para. 20), - the carrier has a recess (Fig. 2, Ref. 7a), - wherein the optical device is arranged to interact with electromagnetic radiation (Para. 53, “laser beam”), dividing the electromagnetic radiation in a first portion (Fig. 8, Ref. 101) and a second portion (Fig. 8, Ref. 102), the optical element is arranged to deflect the first portion in a definable direction (Fig. 8, Ref. 101), the second portion impinges onto the radiation sink (Fig. 8, Refs. 102 and 4).
Tagami does not teach the radiation sink comprises a cooling system which is arranged to reduce the temperature of the radiation sink.
However in the same field of endeavor, Lenigk teaches the radiation sink comprises a cooling system which is arranged to reduce the temperature of the radiation sink (Para. 56).
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Lenigk to passively cool the instrument and provide thermal management.
Regarding claim 17, Tagami does not specifically disclose wherein the cooling system comprises any number of a liquid unit, which is arranged to reduce the temperature of the radiation sink by means of a cooling liquid; cooling fins, which are arranged to increase a surface of the radiation sink; or heat pipes, which are arranged to conduct heat away from the carrier and/or the optical element.
However Lenigk teaches wherein the cooling system comprises any number of a liquid unit, which is arranged to reduce the temperature of the radiation sink by means of a cooling liquid; cooling fins (Para. 55), which are arranged to increase a surface of the radiation sink; or heat pipes, which are arranged to conduct heat away from the carrier and/or the optical element.
Therefore it would have been obvious to one of ordinary skill, in the art at the time, to modify Tagami with Lenigk to passively cool the instrument and provide thermal management.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTINA B BURNS whose telephone number is (571)272-8973. The examiner can normally be reached Monday, Wednesday, and Thursday 7:00 am-11:00 am and Tuesday 8:00 am-3:30 pm.
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/K.J.B./Examiner, Art Unit 3761
/BRIAN W JENNISON/Primary Examiner, Art Unit 3761