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.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because
reference character “9” has been used to designate both first interaction regions and second interaction regions
a “spatial overlap” is not shown in the drawings but is shown to be spatial offset
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. 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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1 and applicant’s recitation of “producing type II modifications of the substrate material”, the examiner questions what process the applicant is using to create said type II modifications. When reconciling the level of skill and knowledge in the art, the broadness in the way the applicant has disclosed the invention of the instant application leaves a person of ordinary skill in the art to equate the use of any ultra short duration laser as producing type II modifications. Further, the use of ultra short duration lasers to create modification paths on a substrate is well known in the laser art and as such is very predictable in the art. Essentially the examiner believes that the BRI for this language in the instant application is that the applicant is using an ultra-short pulse duration laser to create type II modifications but the specification is light on the disclosure of how the applicant is using said laser. Therefore it is unclear what specific process applicant had possession of at the time of filing.
Claims 2-9 are also rejected due to their dependence to one or more of the above rejected independent claims.
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 1-9 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.
Regarding claim 1, the recitation of “producing a first plurality of interaction regions…in each interaction region” the examiner is unclear if the applicant intends to reference a single interaction region of the first plurality of interaction regions as “in each interaction region of the first plurality of interaction regions” or if the applicant is referring to the grouping of a first plurality of interaction regions.
Regarding claim 1, the recitation of “optionally producing a further plurality of interaction regions with a spatial overlap” is unclear if the language of method step c is included or excluded from claim 1. Though MPEP 2173.05(h)(II) allows for the use of “optionally” in grouping as “Another alternative format which requires some analysis before concluding whether or not the language is indefinite involves the use of the term "optionally." In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language "containing A, B, and optionally C" was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim”, the use of “optionally” in the claims of the instant application is ambiguous because it is relating to a step that may or may not be performed in claim 1 which is required by latter dependent claims require that step c is present.
Regarding claim 1, the recitation of “optionally carrying out step c) multiple times” is unclear if the language of method step c is included or excluded from claim 1. Though MPEP 2173.05(h)(II) allows for the use of “optionally” in grouping as “Another alternative format which requires some analysis before concluding whether or not the language is indefinite involves the use of the term "optionally." In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language "containing A, B, and optionally C" was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim”, the use of “optionally” in the claims of the instant application is ambiguous because it is relating to a step that may or may not be performed in claim 1 which is required by latter dependent claims require that step d is present.
Regarding claim 1, the recitation of “a predetermined number of paths” is unclear as to what structure or how many paths is required to meet the limitation because this is not defined in the claims nor the spec in a way that would make one of ordinary skill in the art what is required to meet this limitation.
Regarding claim 1, the recitation of “a predetermined deflection geometry” is unclear as to what structure of the deflection geometry is required to meet the limitation because this is not defined in the claims nor the spec in a way that would make one of ordinary skill in the art what is required to meet this limitation. By way of example the specification of the instant application discloses in par. 72 that it can be either diffractive or scattering but the geometry of these are not disclosed.
Regarding claims 1 and 8 and applicant’s recitation of “producing type II modifications of the substrate material”, the examiner is unclear as to what process or structure is required to create said type II modifications. The broadness in the way the applicant has disclosed the invention of the instant application leaves a person of ordinary skill in the art to equate the use of any ultra short duration laser as producing type II modifications.
Claims 2-9 are also rejected due to their dependence to one or more of the above rejected independent claims.
Regarding claim 3, the recitation of “wherein the predetermined deflection geometry includes a diffractive deflection geometry or a scattering deflection geometry” is unclear what structure is required to make the geometry a diffractive or scattering deflection geometry.
Regarding claim 7, the recitation of “a predetermined temporal shape” is unclear as to what structure or what shape is required to meet the limitation because this is not defined in the claims nor the spec in a way that would make one of ordinary skill in the art what is required to meet this limitation.
Regarding claim 8, the recitation of “wherein the substrate is heated at least in certain regions after step b) in order to change the type II modifications produced” is unclear if the heating process such as in a kiln or oven or is a separate process or if it is a result of the heat caused by the laser. The interpretation is that the laser processing creates the heat which creates the type II modifications.
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, 2, 3, 4, 6, 7, 8, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20210265798 A1 Sakakura in view of EP2965852B1 Gertus
Regarding claim 1,
Sakakura teaches, except where struck through,
A method for producing a light deflection structure (abstract, par. 1 birefringent nanostructures), wherein a substrate material of a substrate (transparent material per par. 27 for substrate 24 ) is irradiated with at least one pulsed laser beam (par. 27 teaches pulsed laser beams and laser beam 14), including the following steps:
a) producing a first plurality of interaction regions (focal spot or focal region or point 22) the at least one laser beam interacting with the substrate material in each interaction region along a first path with a spatial overlap of the interaction regions (fig. 4 path denoted by arrow 28 shows focal spots 22 having a spatial overlap );
c) optionally producing a further plurality of interaction regions with a spatial overlap of the further interaction regions along a further path, which is offset with respect to the previously used paths, and with a spatial overlap with the path used immediately before;
d) optionally carrying out step c) multiple times in order to obtain a predetermined number of paths, and further comprising producing type II modifications of the substrate material (par. 31, 32, 34, 36, 37 teach producing type II nanostructures),
The difference between the prior art and the claimed invention is that Sakakura does not teach: b) producing a second plurality of interaction regions with a spatial overlap of the interaction regions along a second path, which is offset with respect to the first path, with a spatial overlap with the first path;…nor… and changing at least one process parameter from one beam path to another beam path so as to produce a predetermined deflection geometry.
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.
Further, there were design incentives for implementing the claimed variation. Specifically, Gertus teaches creating double refracting nanogratings (10) (par. 31, 32, 45 and 46) to create a polarization transforming optical element 2 to create a beam shaper 1 (par. 69) and further teaches b) producing a second plurality of interaction regions (regions 9 comprise a plurality of fast axis 10 fig. 10) with a spatial overlap (fig. 10, par. 70) of the interaction regions along a second path (trajectory 28 is a back and forth path which inherently has first, second, tertiary…etc. paths), which is offset with respect to the first path, with a spatial overlap with the first path (fig. 10);…and… and changing at least one process parameter from one beam path to another beam path so as to produce a predetermined deflection geometry (Gertus changes the beam path according to trajectory 28 which is a process parameter and this trajectory 28 creates a predetermined deflection geometry because the geometry is the path).
Therefore, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to modify Sakakura with the teachings of Gertus for the purpose of creating an inscribed nanostructure that is highly persistent to environmental impacts (Gertus par. 69).
Regarding claim 2,
The primary combination teaches, The method as claimed in claim 1 (as discussed above).
The difference between the prior art and the claimed invention is that Sakakura does not teach: wherein the at least one process parameter within the one beam path is selected from the first path, the second path, and optionally a further path in accordance with either of steps c) and d).
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.
Further, there were design incentives for implementing the claimed variation. Specifically, Gertus teaches wherein the at least one process parameter within the one beam path is selected from the first path, the second path (trajectory 28 is a back and forth path which inherently has first, second, tertiary…etc. paths Gertus changes the beam path according to trajectory 28 which is a process parameter and this trajectory 28 creates a predetermined deflection geometry, as discussed above), and optionally a further path in accordance with either of steps c) and d).
Therefore, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to modify Sakakura with the teachings of Gertus for the purpose of creating an inscribed nanostructure that is highly persistent to environmental impacts (Gertus par. 69).
Regarding claim 3,
The primary combination teaches, The method as claimed in claim 1 (as discussed above).
Sakakura further teaches,
wherein the predetermined deflection geometry includes a diffractive deflection geometry or a scattering deflection geometry (par. 51 teaches forming the nanostructures of Sakakura such that when light beam 52 is passed through the invention of Sakakura that the light beam 52 responds to diffraction angle theta with reference to the propagation direction 56).
Regarding claim 4,
The primary combination teaches, The method as claimed in claim 1 (as discussed above).
The difference between the prior art and the claimed invention is that Sakakura does not teach: wherein at least one of the first beam path, the second beam path and optionally a further beam path runs along a straight line or has a finite curvature at least in certain regions.
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.
Further, there were design incentives for implementing the claimed variation. Specifically, Gertus teaches wherein at least one of the first beam path, the second beam path and optionally a further beam path runs along a straight line or has a finite curvature at least in certain regions (trajectory 28 is a back and forth path which inherently has first, second, tertiary…etc. paths Gertus changes the beam path according to trajectory 28 which is a process parameter and this trajectory 28 has a finite curve at its switchback).
Therefore, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to modify Sakakura with the teachings of Gertus for the purpose of creating an inscribed nanostructure that is highly persistent to environmental impacts (Gertus par. 69).
Regarding claim 6,
The primary combination teaches, The method as claimed in claim 1 (as discussed above).
Sakakura further teaches,
wherein the first, second or further interaction regions are produced simultaneously or in temporal succession (regarding producing the first interaction regions, par. 42 teaches producing laser pulses arranged in a group 17 which is a temporal group and the repetition is performed at focal spot 22 ).
Regarding claim 7,
The primary combination teaches, The method as claimed in claim 1 (as discussed above).
Sakakura further teaches,
wherein a predetermined temporal shape is impressed on individual pulses of the at least one laser beam (par. 42 teaches producing laser pulses arranged in a group 17 which is a temporal group).
Regarding claim 8,
The primary combination teaches, The method as claimed in claim 1 (as discussed above).
Sakakura further teaches,
wherein the substrate is heated at least in certain regions after step b) in order to change the type II modifications produced (par. 29 teaches that the types of structures produced are dependent upon the parameters of the incident laser beam and par. 31, 32, 34, 36, 37 teach producing type II nanostructures which is inherent to have localized heating at the areas where focal spot 22 impacts the substrate to form type II nanostructures).
Regarding claim 9,
The primary combination teaches, The method as claimed in claim 1 (as discussed above).
Sakakura further teaches,
wherein the substrate configured for use as an optical fiber, a laser disk, a glass display or a solar cell (par. 28 teaches forming the nanostructures of Sakakura on glass).
Expressions relating to the inclusion of material or article worked upon (e.g., wherein the substrate configured for use as an optical fiber, a laser disk, a glass display or a solar cell) by a structure being claimed does not impart patentability to the claims. The material worked upon or the process of using the apparatus is viewed as recitation of intended use and is given patentable weight only to the extent that structure is added to the claimed apparatus (Please see MPEP 2114 R1-2115 R2 for further details).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20210265798 A1 Sakakura in view of EP2965852B1 Gertus in view of US 20200054485 A1 Knox
Regarding claim 5,
The primary combination teaches, The method as claimed in claim 1 (as discussed above).
The difference between the prior art and the claimed invention is that Sakakura does not teach: wherein the process parameter is selected from a group consisting of a spectrum, a pulse energy, a fluence, a temporal pulse width, a temporal pulse shape, a spatial pulse shape, the beam dynamics, a polarization, a pulse repetition rate, a micro-pulse repetition rate, a focus size, a focus cross-sectional shape and a focus profile, an advancement of a laser spot per unit time relative to the substrate, a pulse number per laser spot, and an overlap among immediately adjacent interaction regions.
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.
Further, there were design incentives for implementing the claimed variation. Specifically, Knox teaches using a pulsed laser to modify the refractive index of an optical medium (par. 1) for ocular tissues which his in the same field of endeavor as that of the instant application which is and further teaches adjusting laser parameters such that the process parameter is selected from a group consisting of a spectrum, a pulse energy, a fluence, a temporal pulse width, a temporal pulse shape, a spatial pulse shape, the beam dynamics, a polarization, a pulse repetition rate, a micro-pulse repetition rate, a focus size, a focus cross-sectional shape and a focus profile, an advancement of a laser spot per unit time relative to the substrate, a pulse number per laser spot, and an overlap among immediately adjacent interaction regions (par. 31 and 32 teach adjusting pulse energies pulse to pulse such that they are unequal as well as adjusting a temporal offset).
Therefore, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to modify Sakakura with the teachings of Knox because Sakakura teaches that it is obvious to choose proper pulse energy (par. 45) for the purpose of modifying materials sensitive to breakdown thresholds without otherwise damaging the materials (Knox par. 2).
Conclusion
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.
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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.
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ADAM MICHAEL. ECKARDT
Assistant Examiner
Art Unit 3761
/ADAM M ECKARDT/Examiner, Art Unit 3761
/EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761