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 Arguments
Applicant's arguments filed 03/25/2026 have been fully considered but they are not persuasive.
Many of applicant’s factual points cannot be conceded by the Examiner. For example, Applicant states that POSITA understands “the distance is smaller, more force is exerted, the distance is larger, less force is exerted. This is not so obvious as Applicant claims. For example if the wire is perfectly rigid the same force will be exerted no matter the distance as long as contact is made and if the wire is undergoing plastic deformation (as is the case in a welding application) the complex and generally unsolvable Partial Differential Equations of plastic deformation would predominate. Applicant also states that values representing this function would be understood to be empirically obtained and used in the disclosed lookup table. Again, due to the fundamentally unpredictable nature of plastic deformation under high heat it is not so clear that mere appeal to a “lookup table” is sufficient in this case to support the entirety of the claim. Thus due to the difficult and unpredictable nature – and the generally unrecognized relationship between the variable – one of ordinary skill in the art would not find support for possession by the mere general recitation that common non-specific control tools such as a lookup table could be employed.
It is noted more specifically that Applicant’s arguments generally only relate to the lookup table as providing support for determining the distance in view of the wire force, but the claim is not limited to lookup tables or any such equivalents. If arguendo Applicant is correct about the lookup table providing support the invention, the claims are not limited to lookup tables and are significantly broader and thus unsupported.
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.
Claims 1-6 are 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.
Applicant lacks evidence of possession of the full scope of the limitation “obtain a first indication related to a distance between the delivery opening and the substrate based on the parameter indicative of a force exerted on the laser device by the metallic wire”.
It is never explained in the Written Description how, specifically, one takes a measurement of force and converts to something indicating distance. Taking into account that force and distance have different units and there are not generally considered to be well-known equations or algorithmic methods which can be used to correlate the two. We must also consider that the force exerted on the wire is one derived from a plastic flow under a high thermal load. It is well known that the partial differential equations which define plasticity are generally not analytically solvable nor predictable.
Further, while Applicant does describe some methods and structures which could be used to derive this control variable it is not explained how Applicant actually does it. Instead, Applicant merely appeals to the fact that a PLC or microcontroller can be used with look-up tables and equations. However, these are simply common structures (PLC/microcontroller) to perform common control regimes (equation-based/table-based) without any direction on how Applicant has arranged and programed them to arrive at the claimed invention which purportedly relates a force on the wire to a distance from the substrate.
A similar issue comes into play with the specific further presented limitations of claims 3-6. It is never explained how one algorithmically or by structure converts the measurement of resistance (ohms) in a nozzle/opening to a measure of distance.
While original claims are presumed to have a presumption of support it is noted that when a claim merely alleges a function/result without adequate description as to how that function or result is achieved a finding of lack of written description support is appropriate. As such, without further explanation as to how Applicant specifically arranges/programs the common control structures mentioned in the disclosure to arrive at the relationship between the force and substrate distance claimed there is not adequate evidence of possession.
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 WOODY A LEE JR whose telephone number is (571)272-1051. The examiner can normally be reached Monday - Friday 0800-1630.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward "Ned" 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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/WOODY A LEE JR/Primary Examiner, Art Unit 3761