DETAILED ACTION
Notice of Pre-AIA or AIA Status
This office action is responsive to the amendment filed on 11/18/25. As directed by the amendment: claims 1 and 6 have been amended; no claims have been cancelled, and claims 16 and 17 have been added. Thus, claims 1-17 are presently pending in this application.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
“orientation means” (cl. 1): an orientation means 104 configured to control the direction of said laser beam 103. Thanks to the orientation means of the apparatus of the present invention, the laser beam will define a working zone. The working zone is the surface that is scanned by the laser beam when the specific angle between the window and the laser beam varies during the decoating process thanks to the orientation means. Maximum angles define the maximum decoatable surface 13 a that can be achieved by the decoating device when positioned within apparatus at a specific location. The maximum decoating area is typically a rectangular with a length comprised between 50 mm to 200 mm. Preferably, the decoating area is an area between a 100 mm×100 mm square to a 150 mm×150 mm square. This maximum decoating area is indeed limited by useful area of decoating provided by properties and configurations of the laser beam, such as power, depth of field and by properties and configurations of the orientation means such as orientation angles.”, para. [0136]-[0137].
“suction means” (cl. 3): the apparatus includes four mounts 507 a-507 d for attachment to the window. In an embodiment, mounts 507 a-507 d may be suction cups. Other embodiments may use other means for attachment to the window or to the surrounding wall 505, as would be understood by a person of ordinary skill in the art.”, para. [0032].
“pushing means” (cl. 4): “According to the invention, the apparatus can further comprise at least one rigid pushing means 15 to maintain the distance between the decoating device and the interface P1 of the multi-glazed window 100 and to ensure the parallelism between the decoating device and the surface P1.”, para. [0129].
“displacement device” (cl. 6): “the pulsed laser 410 is attached to a rail 540 in a manner that allows the laser to slide or otherwise move along the length of this rail. In particular, the pulsed laser 410 and lens array 440 may be attached to a mount 570 that is attached to a belt 560 incorporated into this rail length wise. The belt 560 may be mounted on two pulleys, 550 a and 550 b at either end of rail 540. The belt 560 is therefore movable; movement of the belt serves to move the pulsed laser 410 and lens array 440 mounted thereon. One of the pulleys may be driven by a motor 545. In the illustrated embodiment, motor 545 turns pulley 550 a, thereby driving the belt 560. This in turn moves the pulsed laser 410 and its lens array 440 along the length of rail 540 (up and down in the illustrated embodiment). The motor 545 maybe capable of turning in either direction, so that the belt 560 may move in either direction, as shown. In this way, the laser 410 may be moved in either direction along rail 540. In an alternative embodiment, the motor 545 may be mounted at the opposite end of rail 540 to drive pulley 550 b. In yet another embodiment, two motors may be used, one at each of pulleys 550 a and 550 b, and operating in synchronicity.”, para. [0033].
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 1-7 and 14-17 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 recites “wherein the decoating device does not use a motor to displace the decoating device when the laser source is operated”; however, it is unclear what structural limitation performs the aforementioned displacement as the aforementioned limitation only provides a negative limitation without sufficient structure to apprise one of ordinary skill in the art of the scope of the invention.
Claim 1 recites “wherein the decoating device does not use a motor to displace the decoating device when the laser source is operated”; however, it is unclear how a device could be moved without a motor being operably connected thereto. If the Applicant intends to imply that the movement is furthered by human intervention, it is respectfully submitted that even automating a manual activity is not enough to distinguish over the cited prior art (see MPEP 2144.III.Automating a Manual Activity – “The court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.).”).
Appropriate correction is required. The remaining claims are rejected for at least the reason of their direct and/or indirect dependency from independent claim 1.
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.
Claims 1, 3-5, and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Estinto et al. (US 2015/0093554) in view of Nomaru (US 20080061042).
With regard to claim 1, Estinto teaches an apparatus (500, FIG. 5) for removing at least one portion of at least one coating system (120) present in a multi-glazed window (installed in wall 505, FIG. 5) comprising at least two glass panels (110, 405) alternatively separated by at least one interlayer (120) and forming multiple interfaces (see illustrated FIG. 6);
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the apparatus (500) comprising a decoating device (570, 410, 440) including a laser source (410) that generates a laser beam having a specific direction wherein the decoating device further comprises an orientation means (“programmable computer”) configured to control the specific direction of the laser beam (“an optically scanned laser may be used to produce the specified electrically isolated areas in the low-E coating. In such an embodiment, the laser beam may be directed at the necessary locations on the low-E coating by a system of one or more mirrors.” (emphasis added), para. [0046]; “the motors 512 a, 512 b, and 545 may be controlled by a programmable computer (not shown). By programming this computer appropriately, the computer can be made to create and deliver control signals to these motors to control the motion of the pulsed laser 410 and lens array 440, and thereby control the path and pattern of ablation. For example, the apparatus 500 may be used to create any of the patterns illustrated in FIGS. 3A-3D. Alternatively, the motors may be controlled by hardwired logic instead of a computer executing software. Alternatively, the motors may be controlled by hand.” (emphasis added), para. [0038]).
With regard to the newly amended claim limitation of “wherein the decoating device does not use a motor to displace the decoating device when the laser source is operated”, Estinto does teach that “the motors may be controlled by hand” as cited above. Notwithstanding the foregoing, assuming it was determined that Estinto does not explicitly teach the limitation of ““wherein the decoating device does not use a motor to displace the decoating device when the laser source is operated”, Nomaru is cited for its teachings related to a screw furthering movement of a laser device: “The laser beam irradiation unit 5 in the embodiment shown in the figure includes moving means 53 for moving the unit holder 51 in the direction (Z-axis direction) indicated by arrow Z along the pair of guide rails 423, 423. The moving means 53 includes a male screw rod (not shown) disposed between the pair of guide rails 423 and 423”, para. [0046].
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device in the Estinto reference, such that a screw is utilized to actuate a laser device, as suggested and taught by Nomaru, for the purpose of providing an actuation mechanism which is a more cost effective mechanism due to the reduced structural complexity of the screw.
With regard to claim 3, Estinto teaches the apparatus (500) further comprises at least one suction means (507a-d) configured to detachably fix the apparatus to the multi-glazed window (“the apparatus includes four mounts 507 a-507 d for attachment to the window. In an embodiment, mounts 507 a-507 d may be suction cups. Other embodiments may use other means for attachment to the window or to the surrounding wall 505, as would be understood by a person of ordinary skill in the art.”, para. [0032]).
With regard to claim 4, Estinto teaches the apparatus (500) further comprises at least one rigid pushing means (510a/530a, FIG. 6) configured to stabilize the apparatus on the multi-glazed window (installed in wall 505, FIG. 5) (FIG. 6).
With regard to claim 5, Estino teaches the apparatus (500) is inscribed in a parallelepiped rectangle (see rectangular arrangement of glass 110, 405 of FIG. 5) extended along a plane, P, defined by a longitudinal axis, X (horizontal axis X of apparatus 500 in FIG. 5), a vertical axis, Y (vertical axis Y of apparatus 500 in FIG. 5), and being substantially parallel to the interfaces; wherein the decoating device is fastened to the apparatus at any location of the plane P (FIG. 5 illustrates apparatus arranged on glass panels (110, 405) and being movable to a predetermined location) (“there are two panes of glass in the window, 110 and 405. In the illustrated embodiment, the apparatus includes four mounts 507 a-507 d for attachment to the window. In an embodiment, mounts 507 a-507 d may be suction cups. Other embodiments may use other means for attachment to the window or to the surrounding wall 505, as would be understood by a person of ordinary skill in the art.”, para. [0032]).
With regard to claim 14, Estinto teaches the apparatus (500) is mounted to a multi-glazed window (FIG. 6 illustrates glass panes 110/405 with low-e coating 120 therebetween), and wherein the orientation means (“programmable computer”) controls the direction of the laser beam to remove at least one portion of the coating system (“an optically scanned laser may be used to produce the specified electrically isolated areas in the low-E coating. In such an embodiment, the laser beam may be directed at the necessary locations on the low-E coating by a system of one or more mirrors.” (emphasis added), para. [0046]; “the motors 512 a, 512 b, and 545 may be controlled by a programmable computer (not shown). By programming this computer appropriately, the computer can be made to create and deliver control signals to these motors to control the motion of the pulsed laser 410 and lens array 440, and thereby control the path and pattern of ablation. For example, the apparatus 500 may be used to create any of the patterns illustrated in FIGS. 3A-3D. Alternatively, the motors may be controlled by hardwired logic instead of a computer executing software. Alternatively, the motors may be controlled by hand.” (emphasis added), para. [0038]) and wherein the multi-glazed window is mounted on a stationary object (wall 505) or on a mobile object.
With regard to claim 15, Estino teaches the suction means comprises a vacuum pad or a suction cup (“the apparatus includes four mounts 507 a-507 d for attachment to the window. In an embodiment, mounts 507 a-507 d may be suction cups. Other embodiments may use other means for attachment to the window or to the surrounding wall 505, as would be understood by a person of ordinary skill in the art.” (emphasis added), para. [0032])..
With regard to claim 16, with regard to the limitation of the laser source generates the laser beam in a direction parallel to the plane, as claim 17 recites that the laser beam is perpendicular to the plane, it is submitted that the direction of the laser beam (as cited herein in claim 16 in view of the recitation of claim 17) is not critical to the invention, an d additionally, such an adaptation would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art as an obvious change in configuration since it has been held by the courts that a change in configuration without any criticality in operation of the device is nothing more than one of numerous configurations based upon the suitability for the intended final application (In re Dailey, 149 USPQ 47 (CCPA 1976)).
With regard to claim 17, Estino teaches the laser source generates the laser beam (410) in a direction perpendicular to the plane (FIG. 5).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Estinto et al. (US 2015/0093554) in view of Nomaru (US 20080061042), and further in view of Borgeson et al. (US 6,559,411).
With regard to claim 2, Estinto teaches the claimed invention as detailed above and furthermore employs mirrors to perform a laser processing operation(s); however, the citation does not teach the limitation of the orientation means comprises at least a rotatable mirror or a mirrors using a galvanometer based motor. However, Borgeson from the same field of endeavor directed toward a method and apparatus for laser scribing glass sheet substrate coatings teaches the aforementioned limitation: “pulsed laser beam is reflected by mirrors 86 and 88 to an XYZ galvanometer controlled mirror system collectively indicated by 90 that directs the laser beam to perform the scribing. More specifically, the XYZ galvanometer controlled mirror system 90 includes a galvanometer controlled focuser 92 that moves a lens horizontally to control the focal length of the beam in the Z direction and a galvanometer controlled dual mirror assembly 94 that directs the beam in the XY directions so as to thereby collectively provide XYZ control.” (emphasis added) (col. 5, ln. 35-44).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device in the Estinto reference, to include the orientation means comprises at least a rotatable mirror or a mirrors using a galvanometer based motor, as suggested and taught by Borgeson, for the purpose of providing enhanced movement to the mirrors of Estinto to provide precise movement(s) to a predetermined location (Borgeson: col. 5, ln. 35-44).
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Estinto et al. (US 2015/0093554) in view of Nomaru (US 20080061042), and further in view of Denny et al. (US 20040182839).
With regard to claim 6, Estino teaches the invention as claimed including a displacement device (545/540/550A/550B/560) configured to control a position of the decoating device in a direction normal to the plane P (“FIG. 5 shows the pulsed laser 410 moving along vertical rail 540, which in turn is moved along the horizontal rails 510 a and 510 b, other orientations are possible. For example, rails 510 a and 510 b may be attached to the window vertically, and rail 540 may be oriented horizontally. Also, rail 540 is shown in this figure to be approximately perpendicular to rails 510 a and 510 b.”, para. [0041]); however, the citation does not teach an optical system configured to detect on which interface the coating system is localized, and to estimate a distance between the decoating device and the detected interface. However, Denny from the same field of endeavor directed toward a containment plenum for laser irradiation and removal of material from a surface of a structure teaches the aforementioned limitation: “the sensor 250 is adapted to provide a measure of the distance between the laser head 200 and the surface of the structure ….” (emphasis added), para. [0095]; “the controller 500 is adapted to transmit control signals to the laser manipulation system 100 in response to signals from the sensor 250. The laser manipulation system 100 is adapted to adjust the relative distance between the laser head 200 and the interaction region in response to the control signals. In addition, the laser manipulation system 100 can be adapted to adjust the position of the laser head 200 along the surface of the structure in response to the control signals. In this way, the depth information from the sensor 250 at a first location can be used in real-time to move the laser light to another location along the surface once a desired depth at the first location is achieved.” (emphasis added), para. [0092].
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device in the Estinto reference, to include an optical system configured to detect on which interface the coating system is localized, and to estimate a distance between the decoating device and the detected interface, as suggested and taught by Denny, for the purpose of providing a laser operation at a predetermined location with precision and accuracy (Denny: para. [0092].
With regard to claim 7, Estinto teaches the displacement device (545/540/550A/550B/560) comprises a motor (545) and a displacement control unit (“programmable computer”), configured to control and displace the decoating device (570, 410, 440) in the direction normal to the plane P (“the motors 512 a, 512 b, and 545 may be controlled by a programmable computer (not shown). By programming this computer appropriately, the computer can be made to create and deliver control signals to these motors to control the motion of the pulsed laser 410 and lens array 440, and thereby control the path and pattern of ablation. For example, the apparatus 500 may be used to create any of the patterns illustrated in FIGS. 3A-3D. Alternatively, the motors may be controlled by hardwired logic instead of a computer executing software. Alternatively, the motors may be controlled by hand.”). Estino does not explicitly teach displacing the decoating device of a displacement distance equal to a difference between an estimated distance and a focus distance in order to focus the decoating device on the detected interface of the at least one coating system. Denny teaches the aforementioned limitation: “the sensor 250 is adapted to provide a measure of the distance between the laser head 200 and the surface of the structure ….” (emphasis added), para. [0095]; “the controller 500 is adapted to transmit control signals to the laser manipulation system 100 in response to signals from the sensor 250. The laser manipulation system 100 is adapted to adjust the relative distance between the laser head 200 and the interaction region in response to the control signals. In addition, the laser manipulation system 100 can be adapted to adjust the position of the laser head 200 along the surface of the structure in response to the control signals. In this way, the depth information from the sensor 250 at a first location can be used in real-time to move the laser light to another location along the surface once a desired depth at the first location is achieved.” (emphasis added), para. [0092].
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device in the Estinto reference, to include displacing the decoating device of a displacement distance equal to a difference between an estimated distance and a focus distance in order to focus the decoating device on the detected interface of the at least one coating system, as suggested and taught by Denny, for the purpose of providing a laser operation at a predetermined location with precision and accuracy (Denny: para. [0092].
Response to Arguments
Applicant's arguments filed 11/18/25 have been fully considered and are addressed hereafter. The prior art rejections are newly presented in response to the newly presented claim limitations.
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 JOSEPH W ISKRA whose telephone number is (313) 446-4866. The examiner can normally be reached on M-F: 09:00-17:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, IBRAHIME ABRAHAM can be reached on 571-270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH W ISKRA/Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761