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
Rejections under 35 USC 103
Applicant's arguments filed 2/3/2026 have been fully considered but they are not persuasive.
Regarding the applicant’s arguments that Hadano and Rose do not disclose how to focus or non-focus the reflected beam according to the phase of the polygon mirror, nor how to arrange the condensing portion and non-condensing portion. The examiner respectfully argues that this is not disclosed in the claims because the claims are interpreted to only disclose that they are present and configured to transit the laser beam. The art of Hadano and Rose in combination disclose in Hadano a laser apparatus with a polygon mirror with a lens where lens of Hadano is modified with the lens of Rose and where Rose contains two sections, a condensing a non-condensing portion.
Obviousness-Type double patenting rejection
Applicant's arguments filed 2/3/2026 have been fully considered but they are not persuasive.
The applicant did not provide any evidence or arguments regarding the double patenting rejection of 1/12/2026. Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Claim Objections
Claim 1 is objected to because of the following informalities: “wherein the lens comprising” should read “wherein the lens comprises”. Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claim 1 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of copending Application No. 18/549,361 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because 18/549,361 discloses the operation of the polygon mirror and is a normal and expected operation of a polygon mirror in a laser apparatus.
Thus, it is apparent that the more specific reference application claims 1 and 4 are encompassed by the instant application claims 1 and 5, respectively. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Note that since application claims 1 and 5 are anticipated by reference application claims 1 and 4, respectively, and since anticipation is the epitome of obviousness, then application claims 1 and 5 are obvious over patent claims 1 and 4, respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
17611069
18/549,361
1. (Currently Amended) A groove processing device that forms a groove in a surface of an object using a laser beam, the groove processing device comprising:
a light source device configured to output the laser beam;
a polygon mirror configured to reflect the laser beam output from the light source device;
and an optical system including a lens that is provided on an optical path of the laser beam reflected from the polygon mirror
wherein the lens comprising:
a condensing portion configured to transmit the laser beam reflected from one surface of the polygon mirror so as to be focused on the surface of the object and
a non-condensing portion provided outside the condensing portion and configured to transmit the laser beam reflected from a corner portion, in which two adjacent surfaces of the polygon mirror meet, so as not to be focused on the surface of the object.
1. A laser scanning device that scans a surface of an object with a laser beam, the laser scanning device comprising:
a laser beam output unit which irradiates the laser beam;
a polygon mirror which has a prismatic shape including a top surface and a bottom surface that are polygonal, in which at least any one surface excluding the top surface and the bottom surface is formed as a mirror, which rotates about an axis serving as a rotation axis and penetrating the top surface and the bottom surface, and which causes the laser beam irradiated from the laser beam output unit to be reflected at the mirror;
and an optical system which guides the laser beam reflected at the polygon mirror to the surface of the object, wherein the rotation axis of the polygon mirror is parallel to the surface of the object and substantially parallel to a direction in which the laser beam is scanned.
5. (Currently Amended) A groove processing method that forms a groove in a surface of an object using a laser beam, the groove processing method comprising:
an output step of outputting the laser beam from a light source device;
a reflection step of reflecting the laser beam output from the light source device by a polygon mirror;
a condensing portion passage step of causing the laser beam reflected from one surface of the polygon mirror to pass through a condensing portion of a lens included in an optical system, configured to be focused on the surface of the object;
and a non-condensing portion passage step of causing the laser beam reflected from a corner portion, in which two adjacent surfaces of the polygon mirror meet, to pass through a non-condensing portion of the lens that is provided outside the condensing portion configured not to be focused on the surface of the object
4. A laser scanning method of scanning a surface of an object with a laser beam, the laser scanning method comprising:
a laser beam output step of irradiating the laser beam using a laser beam output unit;
a reflection step of reflecting the laser beam irradiated from the laser beam output unit at a mirror using a polygon mirror which has a polygonal shape including a top surface and a bottom surface that are polygonal, in which at least any one surface excluding the top surface and the bottom surface is formed as the mirror, and which rotates about an axis serving as a rotation axis and penetrating the top surface and the bottom surface;
and a light guiding step of guiding the laser beam reflected at the polygon mirror to the surface of the object using an optical system, wherein the rotation axis of the polygon mirror is parallel to the surface of the object and substantially parallel to a direction in which the laser beam is scanned
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.
Claim(s) 1 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20190105734 A1 Hadano in view of US 4682030 A Rose.
Regarding claim 1, Hadano teaches, except where struck through,
A groove processing device (laser processing device 2) that forms a groove in a surface of an object (par. 10 teaches “in the case where the present invention is applied to a laser processing apparatus for performing ablation, it is possible, without coating the surface of the wafer with a liquid resin, to restrain adhesion of debris generated at the time of laser processing to devices, and thereby to prevent the device processing quality from being lowered”) using a laser beam (LB per figs. 6 and 7), the groove processing device comprising:
a light source device (laser oscillator 82) configured to output the laser beam (LB per figs. 6 and 7 and is inherently configured to be output by laser oscillator 82);
a polygon mirror (polygon mirror 91) configured to reflect the laser beam output from the light source device (LB per figs. 6 and 7 and par. 34 teaches “as dispersing means for dispersing the laser beam LB emitted from the laser oscillator 82 and a motor 92 adapted to rotate the polygon mirror 91 at high speed in a direction indicated by arrow R are disposed inside an upper housing 86 a of the condenser 86” is inherently configured to be reflected by polygon mirror 91);
and an optical system including a lens that is provided on an optical path of the laser beam (LB per figs. 6 and 7 is an optical path) reflected from the polygon mirror (LB per figs. 6 and 7 is an optical path with condenser 86 in the optical path x),
wherein
reflected from one surface of the polygon mirror so as to be focused on the surface of the object (fig. 8 since the polygon mirror reflects characteristics or features A is capable of performing "functional recitation"…Applicant has claimed a specific structure, examiner has found said structure, therefore the intended use is inherent)
and configured to transmit the laser beam reflected from a corner portion, in which two adjacent surfaces of the polygon mirror meet, so as not to be focused on the surface of the object (fig. 8).
The difference between the prior art and the claimed invention is that Hadano does not teach: the lens comprising: a condensing portion configured to transmit the laser beam…and a non-condensing portion provided outside the condensing portion.
Rose teaches a resin objective lens which converges laser light (par. 3) the lens (Fresnel Lens 18) comprising: a condensing portion (18a) configured to transmit the laser beam (column 1 lines 41 to 55 teach passing infrared radiation in the wavelength range of 8um to 14um which is a form of transmitting electromagnetic radiation and is therefore obvious to be capable to pass a laser beam of an infrared wavelength)…and a non-condensing portion (18b) portion provided outside the condensing portion and transmits the laser beam (column 1 lines 41 to 55 teach passing infrared radiation in the wavelength range of 8um to 14um which is a form of transmitting electromagnetic radiation and is therefore obvious to be capable to pass a laser beam of an infrared wavelength).
Accordingly, the prior art references teach that it is known that Fresnel lenses are elements that are known in the art for providing focusing of electromagnetic radiation in the wavelength range from infrared to ultraviolet.
Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to have substituted condensing Fteta lens 86b per fig. 8 of Hadano with the Fresnel lens 18 of Rose to allow for a focus of electromagnetic radiation in the infrared wavelength.
Regarding claim 5,
Hadano teaches, except where struck through,
A groove processing method that forms a groove in a surface of an object (par. 10 teaches “in the case where the present invention is applied to a laser processing apparatus for performing ablation, it is possible, without coating the surface of the wafer with a liquid resin, to restrain adhesion of debris generated at the time of laser processing to devices, and thereby to prevent the device processing quality from being lowered”) using a laser beam (LB per figs. 6 and 7), the groove processing method comprising:
an output step of outputting the laser beam from a light source device (LB per figs. 6 and 7 is output or irradiated towards polygon mirror 91);
a reflection step of reflecting the laser beam output from the light source device by a polygon mirror (polygon mirror 91; LB per figs. 6 and 7; par. 34 teaches “as dispersing means for dispersing the laser beam LB emitted from the laser oscillator 82 and a motor 92 adapted to rotate the polygon mirror 91 at high speed in a direction indicated by arrow R are disposed inside an upper housing 86 a of the condenser 86”);
a condensing portion passage step of causing the laser beam reflected from one surface of the polygon mirror to pass through (condenser 86) , configured to be focused on the surface of the object (portion of condenser 86 after F-theta lens 86b; par. 39 teaches “The positions of the mirrors M constituting the polygon mirror 91 vary attendant on the rotation of the polygon mirror 91, whereby the laser beam LB is applied to the wafer 10 in a dispersed manner. After the laser beam LB is applied to the predetermined mirror M, the laser beam LB is applied to the mirror M on the downstream side in regard of the rotational direction R of the polygon mirror 91, whereby the laser beam LB is applied to the wafer 10 in a dispersed manner”);
and a non-condensing portion passage step of causing the laser beam reflected from a corner portion, in which two adjacent surfaces of the polygon mirror meet, (par. 39 teaches “The positions of the mirrors M constituting the polygon mirror 91 vary attendant on the rotation of the polygon mirror 91, whereby the laser beam LB is applied to the wafer 10 in a dispersed manner. After the laser beam LB is applied to the predetermined mirror M, the laser beam LB is applied to the mirror M on the downstream side in regard of the rotational direction R of the polygon mirror 91, whereby the laser beam LB is applied to the wafer 10 in a dispersed manner”).
The difference between the prior art and the claimed invention is that Hadano does not teach: a condensing portion of a lens included in an optical system …nor… to pass through a non-condensing portion of the lens that is provided outside the condensing portion so as not to be focused on the surface of the object.
Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Rose teaches a resin objective lens which converges laser light (par. 3) a condensing portion (18a) of a lens included in an optical system (Fresnel Lens 18) …and… to pass through (column 1 lines 41 to 55 teach passing infrared radiation in the wavelength range of 8um to 14um which is a form of transmitting electromagnetic radiation and is therefore obvious to be capable to pass a laser beam of an infrared wavelength) a non-condensing portion of the lens (18b) that is provided outside the condensing portion configured not to be focused on the surface of the object (column 1 lines 41 to 55 teach passing infrared radiation in the wavelength range of 8um to 14um which is a form of transmitting electromagnetic radiation and is therefore obvious to be capable to pass a laser beam of an infrared wavelength).
Accordingly, the prior art references teach that it is known that Fresnel lenses are elements that are known in the art for providing focusing of electromagnetic radiation in the wavelength range from infrared to ultraviolet.
Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to have substituted condensing Fteta lens 86b per fig. 8 of Hadano with the Fresnel lens 18 of Rose to allow for a focus of electromagnetic radiation in the infrared wavelength.
Claim(s) 4 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20190105734 A1 Hadano in view of US20150230341A1 Milne.
Regarding claim 4,
The primary combination teaches, The groove processing device according to claim 1 (as discussed above).
Hadano does not teach further comprising: a shielding plate that is provided on the optical path of the laser beam transmitted through the non-condensing portion.
Milne teaches, further comprising: a shielding plate (mask 16) that is provided on the optical path of the laser beam transmitted through the non-condensing portion (fig. 4 shows mask 16 after lens 19).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device in the Hadano reference, to include further comprising: a shielding plate that is provided on the optical path of the laser beam transmitted through the non-condensing portion, as suggested and taught by Milne, for the purpose of providing the advantage to form structures in the layer corresponding to the mask pattern (par. 47).
Regarding claim 8,
Hadano teaches, The groove processing method according to claim 5 (as discussed above).
Hadano teaches, does not teach further comprising: a shielding step of blocking the laser beam that has passed through the non- condensing portion in the non-condensing portion passage step using a shielding plate that is provided on the optical path of the laser beam.
Milne teaches, further comprising: a shielding step (mask 16) of blocking the laser beam that has passed through the non- condensing portion in the non-condensing portion passage step using a shielding plate that is provided on the optical path of the laser beam (fig. 4 shows mask 16 after lens 19).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device in the Hadano reference to include a shielding step of blocking the laser beam that has passed through the non- condensing portion in the non-condensing portion passage step using a shielding plate that is provided on the optical path of the laser beam, as suggested and taught by Milne, for the purpose of providing the advantage to form structures in the layer corresponding to the mask pattern (par. 47).
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 ADAM M ECKARDT whose telephone number is (313)446-6609. The examiner can normally be reached 6 a.m to 2:00 p.m EST Monday to Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward Landrum can be reached at (571) 272-5567. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ADAM MICHAEL. ECKARDT
Assistant Examiner
Art Unit 3761
/ADAM M ECKARDT/Examiner, Art Unit 3761 /EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761