Prosecution Insights
Last updated: April 19, 2026
Application No. 17/692,789

LASER CLEANING OF OXIDIZED PARTS

Final Rejection §103
Filed
Mar 11, 2022
Examiner
CHOU, JIMMY
Art Unit
3761
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Ats Industrial Automation Inc.
OA Round
2 (Final)
71%
Grant Probability
Favorable
3-4
OA Rounds
3y 4m
To Grant
87%
With Interview

Examiner Intelligence

Grants 71% — above average
71%
Career Allow Rate
594 granted / 836 resolved
+1.1% vs TC avg
Strong +16% interview lift
Without
With
+15.6%
Interview Lift
resolved cases with interview
Typical timeline
3y 4m
Avg Prosecution
40 currently pending
Career history
876
Total Applications
across all art units

Statute-Specific Performance

§101
0.8%
-39.2% vs TC avg
§103
44.0%
+4.0% vs TC avg
§102
16.2%
-23.8% vs TC avg
§112
34.4%
-5.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 836 resolved cases

Office Action

§103
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 . Claim Rejections - 35 USC § 103 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. Claim(s) 1, 11-13 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mashburn (US 5483037) in view of Thomas et al. (US 2005/0006345). Regarding claim 1, Mashburn discloses “a system” (fig.2) “for cleaning an oxide layer from an exterior surface of a base metal of a metal part” (intended use), the system comprising: “a laser system” (28) for projecting a laser beam onto “an oxide surface of the oxide layer, the oxide layer formed on the exterior surface” (MPEP 2115. Col.1 at lines 10-20, i.e., The present invention relates generally to laser ablation devices and, more specifically, to a rapidly switched multiple target laser ablation system for depositing metal and metal oxide films on a substrate. The metal and metal oxide components are ablated individually or in combination by placing them on a movable support and synchronizing discharges of an ablation laser with movement of the support); “a rotary system” (18 and 22) “for rotating the metal part about an axis” (col.3 at lines 1-7, i.e., The drum is rotated about rotation axis "A" by any suitable means for imparting high speed rotation), “the rotary system having a holder” (18) “for holding the metal part adjacent to the laser system” (col.2 at lines 63-67, i.e., A movable support 18 is mounted in the ablation chamber 12. In the illustrated embodiment, the support 18 is a rotatable drum having a plurality of target segments 20, each made of material to be ablated,); and “a control system” (26) “for controlling a plurality of parameters for facilitating an ablation of the oxide layer from the exterior surface as the metal part is rotated about the axis by the rotary system” (col.3 at lines 27-33, i.e., This electrical signal is supplied to a controller 26 to help determine, along with other inputs, control of a pulsed ablation laser 28. The controller 26 controls the laser timing and energy levels needed to achieve a desired film composition. Col.1 at lines 10-20, i.e., The metal and metal oxide components are ablated individually or in combination by placing them on a movable support). Modified Mashburn discloses all the features of claim limitations as set forth above except for values of the plurality of parameters are selected such that removal of the oxide layer is facilitated while ablation of the base metal is inhibited. Thomas et al. teaches “values of the plurality of parameters are selected” ([0024] A laser was set up to operate with the following parameters:-[0025] Repetition rate: 3.5 kHz [0026] Scan speed: 400 mm/sec [0027] Spot size: .about.50 .mu.m [0028] Wavelength: 1064 nm [0029] Energy per pulse: 15 mJ [0030] Pulse width: .about.250 ns max [0031] Peak power: .about.200 KW) such that “removal of the oxide layer is facilitated while ablation of the base metal is inhibited” ([0007] Preferably, said pulsed radiation beam is effective also to etch or clean the surface of the substrate adjacent the interface. This is particularly useful to remove e.g. metal oxides. abstract, i.e., The removal is affected by creating an interaction effect at the interface between the substrate and the layer or coating to create an effect similar to a shockwave which causes local separation of the layer or coating at the interface. This suggest that no substrate is being removed only the coating is removed). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to further modify Mashburn with Thomas et al., by adding Thomas et al.’s laser parameter to Mashburn’s controller, to provide coating removal processing for specific type of coating material (para.0006-0007) as taught by Thomas et al. Regarding claim 11, modified Mashburn discloses “a power level parameter of the plurality of parameters” (Thomas et al., [0035], i.e., Example 1, 85KW and Example 2, 200KW) is adjusted in order to “provide for said ablation of the base metal is inhibited” (Thomas et al., [0007] Preferably, said pulsed radiation beam is effective also to etch or clean the surface of the substrate adjacent the interface. This is particularly useful to remove e.g. metal oxides. abstract, i.e., The removal is effected by creating an interaction effect at the interface between the substrate and the layer or coating to create an effect similar to a shockwave which causes local separation of the layer or coating at the interface. This suggest that no substrate is being removed only the coating is removed). Regarding claim 12, modified Mashburn discloses “a power level parameter of the plurality of parameters is adjusted” (Thomas et al., [0035], i.e., Example 1, 85KW and Example 2, 200KW) in order to “inhibit causing a change in a material property of the base metal” (Thomas et al., [0007] Preferably, said pulsed radiation beam is effective also to etch or clean the surface of the substrate adjacent the interface. This is particularly useful to remove e.g. metal oxides. abstract, i.e., The removal is effected by creating an interaction effect at the interface between the substrate and the layer or coating to create an effect similar to a shockwave which causes local separation of the layer or coating at the interface. This suggest that no substrate is being removed only the coating is removed). Regarding claim 13, modified Mashburn discloses “the power level parameter is selected” (Thomas et al., [0035], i.e., Example 1, 85KW and Example 2, 200KW) “in order to provide for a vaporization threshold within a predefined range” (functional language. In this case, the power level parameter is selected so that only the coating is removed and the vaporization threshold is within a predefined range). Regarding claim 19, modified Mashburn discloses “the exterior surface having a texture formed by the base metal” (Thomas et al., [0007] Preferably, said pulsed radiation beam is effective also to etch or clean the surface of the substrate adjacent the interface. This is particularly useful to remove e.g. metal oxides. abstract, i.e., The removal is affected by creating an interaction effect at the interface between the substrate and the layer or coating to create an effect similar to a shockwave which causes local separation of the layer or coating at the interface. This suggest that no substrate is being removed only the coating is removed). Claims 2 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Mashburn (US 5483037) in view of Thomas et al. (US 2005/0006345) as applied in claims 1, 11-13 and 19, and further in view of Sercel et al. (US 2007/0017908). Regarding claim 2, Mashburn discloses the plurality of parameters includes col.3 at lines 27-33, i.e., This electrical signal is supplied to a controller 26 to help determine, along with other inputs, control of a pulsed ablation laser 28. The controller 26 controls the laser timing and energy levels needed to achieve a desired film composition). Mashburn is silent regarding a rotational speed of the metal part performed by the rotary system for the plurality of parameters. Sercel et al. teaches “a rotational speed of the metal part performed by the rotary system” ([0027] In one embodiment, the workpiece 140 may be moved by rotating the workpiece 140 about a longitudinal axis under the patterned beam 132, as indicated by the arrow 142. Rotation of the workpiece 140 allows machining of a cylindrical surface, curved surface or other surface that wraps around the workpiece 140. In this embodiment, the workpiece 140 may be positioned on and rotated using a rotation stage 160, as is known to those skilled in the art. In one example, the rotation speed of the workpiece may be in the range of about 0.1 rpm to 10 rpm, and preferably about 1.5 rpm. [0029], i.e., In one embodiment, the mask translation, the part rotation and the laser may all be controlled using a controller 170, as is known to those skilled in the art. The scanning speed (e.g., the mask linear translation) and the workpiece speed (e.g., rotation) may be coordinated together with a precision laser fire-on-the-fly pulsing technique known to those skilled in the art to enable control of the power density and the feature image geometry). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Mashburn with Sercel et al., by adding Sercel et al.’s parameter to Mashburn’s controller, to coordinate scanning speed and workpiece speed for controlling power density and the feature image geometry (para.0027 and 0029) as taught by Sercel et al. Regarding claim 15, modified Mashburn discloses “a distance of the exterior surface from the axis is substantially constant” (140 has an exterior surface to the rotation axis of the workpiece is substantially constant). Regarding claim 16, modified Mashburn discloses “a cross sectional shape of the metal part is circular” (MPEP 2115. Examiner noted that the workpiece is not part of the apparatus. Sercel et al., 140 has a cross sectional shape of the metal part is circular. [0030], to machine non-sensitive materials such as glass, metals). Claims 3 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Mashburn (US 5483037) in view of Thomas et al. (US 2005/0006345) as applied in claims 1, 11-13 and 19, and further in view of Cedric (WO 2021/205030). Regarding claim 3, Mashburn discloses all the features of claim limitations as set forth above except for the control system configured for controlling scanning of the laser beam on a plurality of paths along the axis, as the metal part rotates. Cedric teaches “the control system” (The automation module 6) “configured for controlling scanning of the laser beam on a plurality of paths along the axis, as the metal part rotates” (MPEP 2115 with respect to the metal part (i.e., workpiece). Fig.2 shows the plurality of paths (item T) along axis X). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Mashburn with Cedric, by adding Cedric’s control algorithm to Mashburn’s controller, to generate desired profile on the part to be machined on the workpiece (abstract) as taught by Mashburn. Regarding claim 5, modified Mashburn discloses “an overlap between adjacent positions of the laser beam on the same path of the plurality of paths” (Cedric, shows the laser beam follows along the paths continuously and it is inherently and necessarily the laser beam will have a beam spot so that when laser beam move from a position (at a given time) to another position (at another given time) less than the beam spot then there is an overlap between adjacent positions (user defined laser beam spots) of the laser beam) “are defined by at least two the plurality of parameters controlled by the control system” (Sercel et al., [0029], i.e., In one embodiment, the mask translation, the part rotation and the laser may all be controlled using a controller 170, as is known to those skilled in the art. The scanning speed (e.g., the mask linear translation) and the workpiece speed (e.g., rotation) may be coordinated together). Regarding claim 6, modified Mashburn discloses “the laser beam defines an overlap between adjacent positions of the laser beam on the different paths of the plurality of paths” (Cedric, shows the laser beam follows along the paths continuously and it is inherently and necessarily the laser beam will have a beam spot so that when laser beam move from a position (at a given time) to another position (at another given time) less than the beam spot then there is an overlap between adjacent positions (user defined laser beam spots) on the different paths of the laser beams) “are defined by at least two the plurality of parameters controlled by the control system” (Sercel et al., [0029], i.e., In one embodiment, the mask translation, the part rotation and the laser may all be controlled using a controller 170, as is known to those skilled in the art. The scanning speed (e.g., the mask linear translation) and the workpiece speed (e.g., rotation) may be coordinated together). Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mashburn (US 5483037) in view of Thomas et al. (US 2005/0006345) and Cedric (WO 2021/205030) as applied in claim 3 above, and further in view of Sercel et al. (US 2009/0127240). Regarding claim 4, modified Mashburn discloses “the plurality of parameters includes parameters of the laser system selected from the group consisting of: “scan speed” (On page 4, i.e., the scanner 12 is arranged and / or configured to move the focal point of the laser at a speed of more than 0.5 m / s, or even more than 10 m / s, or even more than 20 m / s. The scanner 12is arranged and / or configured to move the focal point of the laser with accelerations of more than 5 m/ s .sup.2, or even more than 500 m / s .sup.2), “pulse frequency” (Cedric, on page 2, energy per pulse parameters. On page 3, i.e., The laser beam used to perform the machining is a laser beam composed of light pulses with a pulse duration between 100fs and 10ps. It can have a frequency greater than 50 kHz); Modified Mashburn is silent regarding defocus for the parameters. Sercel et al. teaches “defocus” ([0038] The beam delivery system 120 may also include optics to defocus the beam 112 during at least part of the machining process. For example, the beam may be defocused during the last pass of the COMO scanning to smooth the surface of the workpiece 102). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Mashburn with Sercel et al., by adding Sercel’s algorithm to Mashburn’s controller, to defocused during the last pass of the COMO scanning to smooth the surface of the workpiece (para.0038) as taught by Sercel et al. Claim 7 and rejected under 35 U.S.C. 103 as being unpatentable over Mashburn (US 5483037) in view of Thomas et al. (US 2005/0006345), as applied in claims 1, 11-13 and 19, and further in view of Tanoue (US 11,752,576). Regarding claim 7, Mashburn discloses all the features of claim limitations as set forth above except for said rotating is at a constant rate. Tanoue teaches “said rotating is at a constant rate” (col.16 at lines 39-42, i.e., the laser processing can be carried out uniformly by maintaining a rotation speed of the chuck 100 constant). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Mashburn with Tanoue, by modifying Mashburn’s rotating rate according to Tanoue’s rotating rate, to provide a pitch of the modification layers M in the horizontal direction can be uniform (col.16 at lines 39-42) as taught by Tanoue. Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Mashburn (US 5483037) in view of Thomas et al. (US 2005/0006345) as applied in claims 1, 11-13 and 19 above, and further in view of Cedric (WO 2021/205030) and Chang et al. (US 2002/0046995). Regarding claim 8, Mashburn discloses all the features of claim limitations as set forth above except for said scanning is performed at a constant scan rate along the plurality of paths. Cedric teaches “said scanning is performed at a fig.2, item T pointed at the plurality of paths). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Mashburn with Cedric, by adding Cedric’s control algorithm to Mashburn’s controller, to generate desired profile on the part to be machined on the workpiece (abstract) as taught by Mashburn. Modified Mashburn is silent regarding constant scan rate. Chang et al. teaches “constant scan rate” ([0009] the scan rate is a constant 200 mm/sec). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Mashburn with Chang et al., by modifying Mashburn’s scan rate according to Chang et al.’s scan rate, to provide desired scant rate (para.0024) as taught by Chang et al. Regarding claim 8 (another claim 8), Mashburn discloses “the exterior surface having a texture formed by the base metal” (examiner noted that the workpiece is not part of the apparatus. MPEP 2115). Regarding claim 9, Mashburn discloses “the texture comprises at least one of indents or projections in the exterior surface” (examiner noted that the workpiece is not part of the apparatus. MPEP 2115). Claim 14 and rejected under 35 U.S.C. 103 as being unpatentable over Mashburn (US 5483037) in view of Thomas et al. (US 2005/0006345) as applied in claims 1, 11-13 and 19 above, and further in view of Anger (US 20090242527). Regarding claim 14, Mashburn discloses all the features of claim limitations as set forth above except for measuring a reflectivity of the cleaned metal part in order to test for ablation of the base metal. Anger teaches “measuring a reflectivity of the cleaned metal part in order to test for ablation of the base metal” ([0087] On the basis of the sensor signal SS transmitted by the sensor 76 during measuring the contour 20 or of a sensor signal SS generated during scanning the surface of the lens independently of the contour measurement, the control means 68 detects the maximum reflectivity of the lens in a step S4. In preliminary tests it has been established for each lens type which maximum reflectivity it has, and it has further been established in preliminary tests which power density is required, taking the scanning velocity v into account, to remove the respective coating in its entire thickness. The data concerning the maximum reflectivity and the assigned required power density are stored in the memory M of the control means 68. By comparison of the maximum reflectivity measured to the maximum reflectivity stored, the control means 68 detects the lens type of the lens whose maximum reflectivity has been measured, and in a step S5 the control means 68 reads the assigned power density required for said lens type out of the memory. This power density is taken as a basis of determining the beam control signal BCS by which the laser power is controlled during processing in the processing area. If, in this way, the required power density is automatically detected by the control means 68 by measuring the maximum reflectivity, the input "lens type" is superfluous and processing faults due to errors in the input "lens type" are avoided). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to further modify Mashburn with Anger, by adding Anger’s measuring device to Mashburn’s system, to control laser power based on feedback signal (para.0087) as taught by Anger. Response to Arguments Applicant's arguments filed 03/19/2026 have been fully considered but they are not persuasive. (1) Applicant argues “35 USC 112 …” on page 5 of remark. In response, the amendment to claim overcome 35 USC 112 rejections. Thus, 35 USC 112 rejections have been withdrawn. (2) Applicant argues “35 USC 102 … Claim 1 is anticipated by Mashburn (US 5483037) … Mashburn is directed to laser ablation ….Mashburn’s control system … not to inhibit ablation of any material …The Examiner characterised the claimed limitation of "cleaning an oxide layer from an exterior surface of a base metal of a metal part" as "intended use" (see Office Action at page 4). The Applicant respectfully submits that this characterisation is incorrect. The amended claim now positively recites that "values of the plurality of parameters are selected such that removal of the oxide layer is facilitated while ablation of the base metal is inhibited." This is a structural and functional limitation of the control system, not merely intended use. The control system must be configured to select parameter values that achieve a specific technical result: facilitating oxide removal whilst inhibiting base metal ablation. This configuration is absent from Mashburn, which has no teaching of inhibiting ablation-rather, Mashburn's entire purpose is to ablate materials for deposition Furthermore, Mashburn does not disclose the specific combination of scan speed, pulse frequency, and defocus parameters, nor the feedback mechanisms (e.g., reflectivity measurement) for process control as recited in dependent claims The Applicant submits that the claimed invention is distinguished over Mashburn at least by the control of parameters to selectively ablate oxide without damaging the base metal, as well as by the feedback and optimization features” on page 6. In response, Thomas et al. teaches “values of the plurality of parameters are selected” ([0024] A laser was set up to operate with the following parameters:-[0025] Repetition rate: 3.5 kHz [0026] Scan speed: 400 mm/sec [0027] Spot size: .about.50 .mu.m [0028] Wavelength: 1064 nm [0029] Energy per pulse: 15 mJ [0030] Pulse width: .about.250 ns max [0031] Peak power: .about.200 KW) such that “removal of the oxide layer is facilitated while ablation of the base metal is inhibited” ([0007] Preferably, said pulsed radiation beam is effective also to etch or clean the surface of the substrate adjacent the interface. This is particularly useful to remove e.g. metal oxides. abstract, i.e., The removal is affected by creating an interaction effect at the interface between the substrate and the layer or coating to create an effect similar to a shockwave which causes local separation of the layer or coating at the interface. This suggest that no substrate is being removed only the coating is removed). Thomas et al. reference does not teach or suggest any of base material being damaged. Thomas et al. teaches the coating is removed so that there is no damage is done on the base material. (3) With respect to 35 USC 103 arguments, applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In this case, Sercel, Cedric, Sercel and Tanoue, Chang is not used to address selective oxide removal from metal, nor inhibition of base metal. Thomas et al. teaches values of the plurality of parameters are selected such that “removal of the oxide layer is facilitated while ablation of the base metal is inhibited. Tanoue teaches said rotating is at a constant rate. t would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Mashburn with Tanoue, by modifying Mashburn’s rotating rate according to Tanoue’s rotating rate, to provide a pitch of the modification layers M in the horizontal direction can be uniform (col.16 at lines 39-42) as taught by Tanoue. With respect to claims 11-13, Thomas teaches the characteristic of laser beams such that it is old and well known in the art to adjust the parameter of laser beam (i.e., power level) to control the laser beam at a certain threshold for laser ablation because when power level too high can damage the workpiece (hence, penetrate through the workpiece). With respect to claim 14, Anger teaches measuring a reflectivity of the cleaned metal part in order to test for ablation of the base metal. The purpose is to control laser power density based on a reflectivity of the cleaned metal part so that the laser power is controlled during processing in the processing area. Conclusion THIS ACTION IS MADE FINAL. 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 JIMMY CHOU whose telephone number is (571)270-7107. The examiner can normally be reached Mon-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, Helena Kosanovic can be reached at (571) 272-9059. 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. /JIMMY CHOU/Primary Examiner, Art Unit 3761
Read full office action

Prosecution Timeline

Mar 11, 2022
Application Filed
Sep 16, 2025
Non-Final Rejection — §103
Mar 19, 2026
Response Filed
Apr 03, 2026
Final Rejection — §103 (current)

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