Prosecution Insights
Last updated: May 29, 2026
Application No. 17/917,639

PROCESSING APPARATUS

Non-Final OA §102§103§112
Filed
Nov 22, 2022
Priority
Apr 15, 2020 — nonprovisional of PCTJP2020016602
Examiner
ASSANTE, KEITH BRIAN
Art Unit
3761
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Nikon Corporation
OA Round
1 (Non-Final)
71%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 71% — above average
71%
Career Allowance Rate
101 granted / 142 resolved
+1.1% vs TC avg
Strong +28% interview lift
Without
With
+28.1%
Interview Lift
resolved cases with interview
Typical timeline
3y 3m
Avg Prosecution
10 currently pending
Career history
159
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
95.8%
+55.8% vs TC avg
§102
3.1%
-36.9% vs TC avg
§112
0.4%
-39.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 142 resolved cases

Office Action

§102 §103 §112
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 . Information Disclosure Statement The information disclosure statement (IDS) submitted on 11/22/2024, 11/22/2022, and 01/04/2024 is being considered by the examiner. Drawings The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the first and second surface must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. 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 100 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. In claims 100, 105-107, and 118, the limitation of “the first surface and the second surface” seems unclear. While the specification discloses “a first surface and a second surface facing the first surface, by a processing light from a processing light source, wherein the processing apparatus includes: an objective optical system that is disposed to be located between the first surface and the second surface” in [0008], the specification does not provide information about where these first and second surfaces are. The examiner is going to interpret the first sand second surfaces as the surfaces inside a cylinder (WSP). Further clarity is needed from the applicant. Claim Rejections - 35 USC § 102 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claims 100, 107-108, 111 and 118 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2005053896 A1 - Wagner. Regarding claims 100 and 118, Wagner is directed towards a device for working on the internal surfaces of a cylinder using a laser. Wagner does teach which has a first surface and a second surface facing the first surface by a processing light from a processing light source (Figures 1-3, Element 2 (both sides)), wherein the processing apparatus comprises: an objective optical system that is disposed to be located between the first surface and the second surface and that is configured to irradiate at least one of the first surface and the second surface with the processing light ([Pg. 8] The device 1 according to the invention has a laser 5, the laser beam 4), and a movable optical member that is disposed on an processing optical path that is at the processing light source side from a position between the first surface and the second surface (Figure 1-3, element 6, and [Pg. 8] The beam deflection device 6 allows the laser beam 4 to be moved on a conical surface with an adjustable radius, as shown in the drawing by the laser beam 4 drawn with solid lines 4 and with dashed lines on an opposite side of the conical surface.), an irradiation position of the processing light on at least one of the first surface and the second surface is changed by moving the movable optical member (Figures 1-3, Element 4 (laser)). Regarding claim 107, Wagner does teach the limitations of claim 100. Wagener does teach the objective optical system forms a conjugate plane that is optically conjugate with at least one of the first surface and the second surface (Figure 1-3, it can be seen that the optical directed of the laser coming from the movable lens is conjugate to the first and second object surfaces.). Regarding claim 108, Wagner does teach the limitations of claim 100. Wagener does teach the objective optical system emits the processing light by an angle equal to or larger than 90 degree with respect to an optical axis of the objective optical system ([Pg. 8] Another arrangement is possible, for example the laser 5 can be arranged radially (of course axially outside the workpiece 3) to the inner surface of the cylinder 2 and the laser beam 4 can be deflected by 90° in the beam deflection unit.). Regarding claim 111, Wagner does teach the limitations of claim 100. Wagener does teach a supply part that is configured to supply a gas from a tip of the objective optical system ([Pg. 12] The device shown in Figure 6 additionally features a purge gas device that generates a protective gas flow). Claims 101-104 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2005053896 A1 - Wagner as applied to claim 100 above, and further in view of US 20200101564 A1 - Shibazaki. Regarding claim 101, Wagner does teach the limitations of claim 100. Wagner does teach a condensed position of the processing light by the condensed optical system is changed on the intermediate condensed plane by moving the movable optical member (Figure 1-3, element 6). Wagner does not expressly teach a condensed optical system that is configured to condenses the processing light from the movable optical member on an intermediate condensed plane Shibazaki is directed towards an processing system. Shibazaki does teach a condensed optical system that is configured to condenses the processing light from the movable optical member on an intermediate condensed plane ([0054] Other than light source system 510, as is shown in FIG. 2, beam irradiation section 520 has a beam cross sectional surface intensity conversion optical system 78, a mirror array 80 which is a kind of spatial light modulator (SLM: Spatial Light Modulator), and condensing optical system 82 which condenses light from mirror array 80, arranged sequentially on an optical path of the parallel beam from light source system 510). It would have been obvious to one of ordinary skill in the art before effective filing date of the invention to a condensed optical system that is configured to condenses the processing light from the movable optical member on an intermediate condensed plane by Shibazaki in the system of Wagner, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Person having ordinary skill in the art (PHOSITA) would have understood that a condensed optical system that is configured to condenses the processing light from the movable optical member on an intermediate condensed plane of Shibazaki could be predictably used in a variety of systems, including the well-known system of Wagner in a manner which would have predictably taking a plurality of lasers and mix them to be uniformed. Moreover, there is no indication in the instant application that any special steps or devices were devised or that any surprising results were derived from simply using a condensed optical system that is configured to condenses the processing light from the movable optical member on an intermediate condensed plane of Shibazaki with the well-known system of Wagner. Regarding claim 102, Wagner and Shibazaki does teach the limitations of claim 101. Wagner does not expressly teach an imaging optical system that is disposed between the condensed optical system and the objective optical system. Shibazaki does teach an imaging optical system that is disposed between the condensed optical system and the objective optical system ([0089] optical system 82 being reduced). It would have been obvious to one of ordinary skill in the art before effective filing date of the invention to an imaging optical system that is disposed between the condensed optical system and the objective optical system by Shibazaki in the system of Wagner, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Person having ordinary skill in the art (PHOSITA) would have understood that an imaging optical system that is disposed between the condensed optical system and the objective optical system of Shibazaki could be predictably used in a variety of systems, including the well-known system of Wagner in a manner which would have predictably focus the beams to the workpiece for processing. Moreover, there is no indication in the instant application that any special steps or devices were devised or that any surprising results were derived from simply using an imaging optical system that is disposed between the condensed optical system and the objective optical system of Shibazaki with the well-known system of Wagner. Regarding claim 103, Wagner and Shibazaki does teach the limitations of claim 102. Wagner does not expressly teach the imaging optical system has a reduction magnification. Shibazaki does teach the imaging optical system has a reduction magnification ([0089] optical system 82 being reduced and figures 4-5). It would have been obvious to one of ordinary skill in the art before effective filing date of the invention to the imaging optical system has a reduction magnification by Shibazaki in the system of Wagner, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Person having ordinary skill in the art (PHOSITA) would have understood that the imaging optical system has a reduction magnification of Shibazaki could be predictably used in a variety of systems, including the well-known system of Wagner in a manner which would have predictably focus the beams to the workpiece for processing. Moreover, there is no indication in the instant application that any special steps or devices were devised or that any surprising results were derived from simply using the imaging optical system has a reduction magnification of Shibazaki with the well-known system of Wagner. Regarding claim 104, Wagner and Shibazaki does teach the limitations of claim 102. Wagner does teach an exit pupil of the imaging optical system is located at a position that is away from an imaging plane of the imaging optical system toward a side opposite to the objective optical system side (Figure 1-3, shows the laser exiting the movable lens system (6)). Claims 105-106, and 109 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2005053896 A1 - Wagner as applied to claim 100 above, and further in view of US 20160008920 A1 - Goya. Regarding claim 105, Wagner does teach the limitations of claim 100. Wagner does not expressly teach a measurement part that is configured to optically receive, through the objective optical system, a light from at least one of the first surface and the second surface as a measurement light to measure the at least one. Goya is directed towards a processing apparatus. Goya does teach a measurement part that is configured to optically receive, through the objective optical system, a light from at least one of the first surface and the second surface as a measurement light to measure the at least one ([0074] The gap detecting unit 41 is a gap measuring device for using laser light. The gap detecting unit 41 detects a gap between a focal point of the laser L to be emitted to the workpiece W and the workpiece W). It would have been obvious to one of ordinary skill in the art before effective filing date of the invention to a measurement part that is configured to optically receive, through the objective optical system, a light from at least one of the first surface and the second surface as a measurement light to measure the at least one by Goya in the system of Wagner, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Person having ordinary skill in the art (PHOSITA) would have understood that a measurement part that is configured to optically receive, through the objective optical system, a light from at least one of the first surface and the second surface as a measurement light to measure the at least one of Goya could be predictably used in a variety of systems, including the well-known system of Wagner in a manner which would have predictably used to detect the gap between the parallel lasers. Moreover, there is no indication in the instant application that any special steps or devices were devised or that any surprising results were derived from simply using a measurement part that is configured to optically receive, through the objective optical system, a light from at least one of the first surface and the second surface as a measurement light to measure the at least one of Goya with the well-known system of Wagner. Regarding claim 106, Wagner and Goya does teach the limitations of claim 105. Wagner does not expressly teach an imaging optical system that is disposed between the objective optical system and the movable optical member, the measurement part is configured to optically receiving, through the objective optical system and the imaging optical system, the light from at least one of the first surface and the second surface as the measurement light. Goya does teach an imaging optical system that is disposed between the objective optical system and the movable optical member, the measurement part is configured to optically receiving, through the objective optical system and the imaging optical system, the light from at least one of the first surface and the second surface as the measurement light (Figure 2, element 41. [0069] The catoptric system 36 reflects the laser L output from the laser turning unit 35 to the condensing optical system 37 by the first reflecting mirror 71 and the second reflecting mirror 72. The second reflecting mirror 72 is a half mirror, and it enables the imaging unit 40 to image a part to be processed of the workpiece W.). It would have been obvious to one of ordinary skill in the art before effective filing date of the invention to an imaging optical system that is disposed between the objective optical system and the movable optical member, the measurement part is configured to optically receiving, through the objective optical system and the imaging optical system, the light from at least one of the first surface and the second surface as the measurement light by Goya in the system of Wagner, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Person having ordinary skill in the art (PHOSITA) would have understood that an imaging optical system that is disposed between the objective optical system and the movable optical member, the measurement part is configured to optically receiving, through the objective optical system and the imaging optical system, the light from at least one of the first surface and the second surface as the measurement light of Goya could be predictably used in a variety of systems, including the well-known system of Wagner in a manner which would have predictably used to detect the gap between the parallel lasers. Moreover, there is no indication in the instant application that any special steps or devices were devised or that any surprising results were derived from simply using an imaging optical system that is disposed between the objective optical system and the movable optical member, the measurement part is configured to optically receiving, through the objective optical system and the imaging optical system, the light from at least one of the first surface and the second surface as the measurement light of Goya with the well-known system of Wagner. Regarding claim 109, Wagner does teach the limitations of claim 100. Wagner does teach the driving system moves the movable optical member in consideration of a projection characteristic of the objective optical system ([Pg. 8] The device 1 according to the invention has a laser 5, the laser beam 4 of which can be deflected laterally in two directions by a beam deflection unit 6 which can be controlled in two directions. Such beam deflection units 6, also known as scanners, are known in themselves and will therefore not be explained in more detail here.). Wagner does not expressly teach a driving system that is configured to move the movable optical member. Goya does teach a driving system that is configured to move the movable optical member ([0010] Advantageously, in the processing apparatus, the first rotating mechanism includes a first spindle which holds the first prism and of which a part of the light path of the laser is hollow, and a first hollow motor to which the first spindle is rotatably inserted...). It would have been obvious to one of ordinary skill in the art before effective filing date of the invention to a driving system that is configured to move the movable optical member by Goya in the system of Wagner, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Person having ordinary skill in the art (PHOSITA) would have understood that a driving system that is configured to move the movable optical member of Goya could be predictably used in a variety of systems, including the well-known system of Wagner in a manner which would have predictably allow the movable lens to move via the controller to achieve the proper angle. Moreover, there is no indication in the instant application that any special steps or devices were devised or that any surprising results were derived from simply using a driving system that is configured to move the movable optical member of Goya with the well-known system of Wagner. Claim 110 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2005053896 A1 - Wagner as applied to claim 100 above, and further in view of JP 2006026671 A - Sakai. Regarding claim 110, Wagner does teach the limitations of claim 100. Wagner does not expressly teach a suction part that is configured to suck a gas around the objective optical system from a lateral space of the objective optical system. Sakai is directed towards an can manufacturing device. Saki does teach a suction part that is configured to suck a gas around the objective optical system from a lateral space of the objective optical system ([Pg. 9] gas injection nozzle for supplying gas from the bottom of the inner wall of the cup toward the cup edge, and a gas suction/discharge nozzle, wherein the gas injection nozzle and the gas suction/discharge nozzle are concentric cylindrical in shape, the diameter of the gas injection nozzle is smaller than the diameter of the cup, and the diameter of the gas suction/discharge nozzle is greater than or equal to the diameter of the cup.). It would have been obvious to one of ordinary skill in the art before effective filing date of the invention to a suction part that is configured to suck a gas around the objective optical system from a lateral space of the objective optical system by Sakai in the system of Wagner, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Person having ordinary skill in the art (PHOSITA) would have understood that a suction part that is configured to suck a gas around the objective optical system from a lateral space of the objective optical system of Sakai could be predictably used in a variety of systems, including the well-known system of Wagner in a manner which would have predictably to remove the gas from the workpiece after the protection from hair and other debris is achieved. Moreover, there is no indication in the instant application that any special steps or devices were devised or that any surprising results were derived from simply using a suction part that is configured to suck a gas around the objective optical system from a lateral space of the objective optical system of Sakai with the well-known system of Wagner. Allowable Subject Matter Claims 112-117 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Regarding claim 112, the prior art does not expressly teach at least a part of at least one of the first surface and the second surface is measured when the movement part moves the objective optical system toward a first side along the first direction, at least a part of at least one of the first surface and the second surface is processed when the movement part moves the objective optical system toward a second side opposite to the first side along the first direction. Regarding claim 113, the prior art does not expressly teach the objective optical system includes an optical member that is located at the most object side along an optical path of the processing light among optical members included in the irradiation optical system, a position on the object that is irradiated with the processing light emitted from the optical member is located at a position that is away from an object-side optical surface of the optical member located at the most object side toward an entrance side of the optical member along an optical axis direction of the objective optical system. Furthermore claims 114-117 depend on claim 113 so are allowable, assuming the other 112(b) rejection and objections are amended. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEITH BRIAN ASSANTE whose telephone number is (571)272-5853. The examiner can normally be reached M-F 7:30 am - 4:30 pm EST. 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, Steven W Crabb can be reached at (571) 270-5095. 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. /KEITH BRIAN ASSANTE/Examiner, Art Unit 3761 /ELIZABETH M KERR/Primary Examiner, Art Unit 3761
Read full office action

Prosecution Timeline

Nov 22, 2022
Application Filed
Apr 09, 2026
Non-Final Rejection mailed — §102, §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
71%
Grant Probability
99%
With Interview (+28.1%)
3y 3m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 142 resolved cases by this examiner. Grant probability derived from career allowance rate.

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