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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 1-4, 8-9 and 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/16/2025.
Applicant’s election without traverse of Invention II in the reply filed on 9/16/2025 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 6. Claim 6 recites “the surface at which fluorescence is first detected for;” which is an incomplete phrase and cannot be properly interpreted without extrapolating. For examination purpose the limitation will be interpreted as “the surface at which fluorescence is first detected for each area”
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.
Claims 5-7, 10-11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over US 20050056767 A1 to Kaplan et al. in view of US 20190187448 A1 to Hashimoto
Regarding Claim 5. Kaplan discloses an automatic landing method for laser processing, the method comprising: adjusting a relative position of a microscope objective and a surface of a workpiece (para 72 “an objective lens being controllably focusable on the sample by altering a distance between the lens and the sample”) to be processed to different relative positions within a preset travel range along an optical axis of a light beam(para 63 “focusing the sample by altering a distance between the objective lens and the sample to maximize light intensity gathered from the identified objects of interest”); whilst adjusting the relative position, capturing images of the surface at different relative positions within the preset travel range in real-time (para 66 “taking a series of images”); for each image, detecting whether fluorescence is generated (para 112 “taking images of fluorescing samples”) in real-time.
Kaplan does not specifically disclose that the light is a laser beam and collecting the detected fluorescence results to provide a data set with detected fluorescence results; determining, using the data set, the relative position of the microscope objective and the surface at which the fluorescence is first detected. Kaplan does disclose measure the light intensity at each of the steps and to select a one of the steps giving maximum intensity as a focus distance and the light intensity measurement unit is operable to compute an average intensity over an image taken of the sample using at least a first of the focus steps.
However, Hashimoto discloses a process for a laser microscope wherein the light source is a laser beam (See at least para 18) and collecting the detected fluorescence results to provide a data set with detected fluorescence results determining, using the data set, the relative position of the microscope objective and the surface at which the fluorescence is first detected (See para 22-24 “processing unit 13 is configured to generate an image on the basis of the luminance information output from the detector 11, as well as scanning-position information indicating the XY-direction positions of the laser beam determined by the XY scanning part 7 and the Z-direction position of the laser beam determined by the Z scanning part 9”), as the substitution of one known element for another yields predictable results to one of ordinary skill in the art (MPEP2143(I)(B), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include that the light is a laser beam and collecting the detected fluorescence results to provide a data set with detected fluorescence results; determining, using the data set, the relative position of the microscope objective and the surface at which the fluorescence is first detected.
Regarding Claim 6. Kaplan in view of Hashimoto further discloses irradiating one or more different areas of the surface and for each area adjusting, capturing, detecting and determining in accordance with the method of claim 5 (See at least Kaplan para 63) to determine the relative position of the microscope objective and the surface at which fluorescence is first detected for each area (Hashimoto para 23); using the determined relative positions at which the fluorescence is first detected for each of the one or more different areas, calculating an inclination angle of the surface relative to the optical axis of the laser beam (See Hashimoto para 23 “generate an image on the basis of the luminance information output from the detector 11, as well as scanning-position information”).
Regarding Claim 7. Kaplan in view of Hashimoto further discloses irradiating one or more different areas of the surface and for each area adjusting, capturing, detecting and determining in accordance with the method of claim 5 (See at least Kaplan para 63) to determine the relative position of the microscope objective and the surface at which fluorescence is first detected for each area (Hashimoto para 23); using the determined relative position at which the fluorescence is first detected for each of the one or more different areas, calculating an average relative position; adjusting the relative position of the microscope objective and the surface to the calculated average position before laser processing is performed (See Hashimoto para 22-24).
Regarding Claim 10. Kaplan discloses an automatic landing system for laser processing, comprising a microscope objective (Fig. 1 microscope 12) for focusing a laser beam (it is noted the laser beam or any device producing a laser is not positively recited and thus not given patentable weight) the system further comprising an image sensor (Fig. 1 Camera 14), a driver (Fig. 1 motorized focus mechanism 20), a detector (para 144 “the light intensity detection unit”), and a controller (Fig. 1 computer 16); wherein: the image sensor is configured to capture an image of a surface of a workpiece to be processed in real-time (para 117); the detector is configured to detect in real-time, from an image captured by the image sensor, light intensity (para 143-144); the controller is configured to operate the driver to adjust the relative position of the microscope objective and the surface within a preset travel range along an optical axis of the laser beam (para 115 “The distance is controlled in response to light intensity measurements, preferably using motorized focus mechanism 20”);the controller is further configured to determine, the relative position of the microscope objective (See para 112 and para 117).
Kaplan does not specifically disclose that the detector is configured to detect in real-time whether fluorescence is generated; using a set of detected fluorescence results collected from the detector; to determine the surface at which the fluorescence is first detected. Kaplan does disclose measure the light intensity at each of the steps and to select a one of the steps giving maximum intensity as a focus distance and the light intensity measurement unit is operable to compute an average intensity over an image taken of the sample using at least a first of the focus steps.
However, Hashimoto discloses a detector is configured to detect in real-time whether fluorescence is generated; using a set of detected fluorescence results collected from the detector; to determine the surface at which the fluorescence is first detected (See para 22-24 “processing unit 13 is configured to generate an image on the basis of the luminance information output from the detector 11, as well as scanning-position information indicating the XY-direction positions of the laser beam determined by the XY scanning part 7 and the Z-direction position of the laser beam determined by the Z scanning part 9”), as the substitution of one known element for another yields predictable results to one of ordinary skill in the art (MPEP2143(I)(B), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include that the detector is configured to detect in real-time whether fluorescence is generated; using a set of detected fluorescence results collected from the detector; to determine the surface at which the fluorescence is first detected.
Regarding Claim 11. Kaplan further discloses the controller is further configured to operate the driver (para 112) to adjust the relative position within the preset travel range for one or more different areas of the surface for which the laser beam is irradiated (para 117); wherein, using the relative position determined by the controller at which the fluorescence is first detected for each of the one or more different areas, an inclination angle of the surface relative to the optical axis of the laser beam can be calculated (This limitation is determined to be both functional and conditional. See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) "[t]he broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur." Schulhauser at 14).
Regarding Claim 14. Kaplan further discloses the controller is further configured to operate the driver (para 112) to adjust the relative position within the preset travel range for one or more different areas of the surface for which the laser beam is irradiated (para 117); wherein, using the relative position determined by the controller at which the fluorescence is first detected for each of the one or more different areas, an average relative position can be calculated (This limitation is determined to be both functional and conditional. See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) "[t]he broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur." Schulhauser at 14).
Conclusion.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDMOND C LAU whose telephone number is (571)272-5859. The examiner can normally be reached M-Th 8am-6pm EST.
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/EDMOND C LAU/Primary Examiner, Art Unit 2871