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 Amendment
The amendment filed on or after May 21, 2026 has been entered. Claims 1-6 are currently pending. Claims 7-8 are withdrawn by applicant’s election. Of the pending claims, claims 1, 4, 5, and 6 are amended. In response to the applicant’s arguments and amendments, a more detailed action and references are provided.
Response to Arguments
The arguments filed May 21, 2026 have been fully considered, but they are not fully persuasive. Regarding the applicant’s arguments that:
The amendments overcome the prior art: This argument is found to be persuasive. The examiner concedes that the teaching of the prior art do not teach the limitations of the independent Claim as amended. The prior art rejection is withdrawn in view of the amendments.
The amendments overcome the previously set forth 112f interpretation: The examiner agrees. The previously set forth 112f interpretation is withdrawn in view of the applicant’s amendments.
The 112b rejection is overcome as “Applicant has amended the claims in view of the Examiner's comments. Applicant respectfully submits that the claims now even more fully satisfy the requirements of 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph”: The examiner respectfully disagrees with this assertion. While the amendments overcome the originally set forth 112b rejection of Claim 5, the remaining 112b rejections (of Claim 1 and 6) are not overcome. With regard to claim 1, the amendments present additional issues addressed in the section regarding 112b rejections.
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.
Claims 1-6 are 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.
Claim 1 features the limitation “a laser processing device… wherein the control unit:
performs…moving the first converging point and the second converging point along the second line so that a crack extending from the modified region formed at the first converging point in the first direction and a crack extending from second converging point in the first direction are not connected with each other.” Although the intended outcome of this limitation is clear, the configuration of the controller for the claimed invention to achieve the desired effect is not clear since the specification simultaneously implies that the difference in x position of the convergence points achieves this function ([0043]) as well as that alignment of the convergences points in the x direction provides this function ([0016]). It is not clear how this functional limitation affects the configuration of the controller and/or the laser processing device. If the limitation is related to the offset of the convergence points in the x and/or y direction, the offset, if any, required in each direction is not clear.
Similarly, claim 6 features the limitation “a crack extending from the modified region formed at the fifth converging point in the first direction and a crack extending from the modified region at the sixth converging point in the first direction are not connected with each other.” It is not clear how this functional limitation affects the configuration of the controller and/or the laser processing device. If the limitation is related to the offset of the convergence points in the x and/or y direction, the offset, if any, required in each direction is not clear.
Additionally, Claim 1, as amended, features the limitation “wherein the control unit, in the second process, causes a crack extending from a first modified region, which is the modified region formed at the first converging point, not to reach a back surface of the object opposite to the incident surface, and causes a crack extending from a second modified region, which is the modified region formed at the second converging point, not to reach the incident surface, and wherein the control unit, in the third process, forms a crack over the first modified region and the second modified region, and causes the crack extending from the first modified region to reach the back surface and causes the crack extending from the second modified region to reach the incident surface.” It is not clear how the structure of the invention achieves this intended outcome. In particular, it is not clear how the controller achieves the end of the causing the “crack extending from a first modified region…not to reach the incident surface” in the second process or “causes the crack extending from the first modified region to reach the back surface and causes the crack extending from the second modified region to reach the incident surface” in the third process. The scope of the invention required to achieve the intended outcome is not clearly defined. Although the desired outcome is clear, it is not clear how this functional limitation affects the configuration of the controller and/or the laser processing device.
MPEP Section 2173. 05(g) states that “Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty") (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938));
In this case, the claims recite a result achieved, i.e. the behavior of cracks, with functional language, but fail to provide a clear-cut indication of the scope of the laser processing device and controller that achieve the intended result. A review of the specification does not set forth enough details of controlling crack behavior to determine the scope of the claims, or what behaviors of the controller would be encompassed by the claims.
The remaining claims are rejected in light of their dependence of Claim 1.
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 SOLAN OLIVA whose telephone number is (571-)272-2518. The examiner can normally be reached Monday-Thursday 7:00-3:00.
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, Ibrahime Abraham can be reached at (571) 270-8241. The fax phone number for the organization where this application or proceeding is assigned is 571-270-5569.
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/SOLAN OLIVA/Examiner, Art Unit 3761
/TOPAZ L. ELLIOTT/Primary Examiner, Art Unit 3761
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