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 .
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a first beam size adjustment unit for adjusting a size of a laser beam” in claim 8.
“a second beam size adjustment unit for adjusting a size of a laser beam” in claim 9.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
(1) “a first beam size adjustment unit” in claim 8. There is no disclosure what structures constitute the first beam size adjustment unit.
(2) “a second beam size adjustment unit” in claim 9. There is no disclosure what structures constitute a second beam size adjustment unit.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 8-10 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.
Claim 8 recites “a first beam size adjustment unit for adjusting a size of a laser beam”. As described above, the disclosure does not provide adequate structure to perform the claimed function of “adjusting a size of a laser beam”. The specification does not demonstrate that applicant has made an invention that achieves the claimed function of “adjusting a size of a laser beam” because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor has possession of the claimed invention.
As described above, the disclosure does not provide adequate structure to perform the claimed function of “transmitting the laser beam”. The specification does not demonstrate that applicant has made an invention that achieves the claimed function of “transmitting the laser beam” because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor has possession of the claimed invention.
Claim 9 recites “a second beam size adjustment unit for adjusting a size of a laser beam”. As described above, the disclosure does not provide adequate structure to perform the claimed function of “adjusting a size of a laser beam”. The specification does not demonstrate that applicant has made an invention that achieves the claimed function of “adjusting a size of a laser beam” because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor has possession of the claimed invention.
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 3-10 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 3 recites “the laser” at line 2. There is insufficient antecedent basis regarding this claim limitation. It is unclear if the laser refers to “ablation laser” or “notching laser”.
Claim 4 recites “the laser”. There is insufficient antecedent basis regarding this claim limitation. It is unclear if the laser refers to “ablation laser” or “notching laser”.
Claim 8 recites “a first beam size adjustment unit for adjusting a size of a laser beam”. It is unclear what structure constitutes a first beam size adjustment unit.
Claim 9 recites “a second beam size adjustment unit for adjusting a size of a laser beam”. It is unclear what structure constitutes a second beam size adjustment unit.
it.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102 a1 as being anticipated by Fukuda et al. (US 20090057284).
Regarding claim 1, Fukuda et al discloses “a notching apparatus” (fig.2) “for notching an electrode sheet used in a secondary battery” (intended use), the notching apparatus comprising:
“an ablation laser source unit” (2a) “configured to radiate “ablation laser” (3a) that “performs configured to perform an ablation operation” ([0035], i.e., it is possible to irradiate the second metal layer 1b with the second laser beam 3b, as shown in FIG. 2, after removing the first metal layer 1a by irradiating the first laser beam 3a onto the first metal layer 1a) on “the electrode sheet” (MPEP 2115. Workpiece 1);
“a notching laser source unit” (2b) configured to radiate “notching laser” (3b), wherein “the notching laser is configured to be emitted to a place, in which wherein the ablation operation has been performed by the ablation laser” ([0035], i.e., it is possible to irradiate the second metal layer 1b with the second laser beam 3b, as shown in FIG. 2, after 4removing the first metal layer 1a by irradiating the first laser beam 3a onto the first metal layer 1a. Fig.2 shows the notching laser 3b remove second metal layer 1b to a place in which the ablation operation has been performed by the ablation laser 3b), to notch “the electrode sheet” (MPEP 2115. Workpiece 1); and
“an integral scanner unit” (6 and 4ab. [0040] Next, the control device 8 generates a command to the adjusting mechanism 6 to adjust the first reflecting mirror 4ab. This suggest 6 and 4ab are connected to form an integral scanner unit in order to control the scanning mirror 4ab) to which “the ablation laser” (2a) radiated from “the ablation laser source unit” (2a) and “the notching laser” (2b) radiated from “the notching laser source unit” (3b) “are configured to be incident” (2a and 2b are configured to be incident at the workpiece),
wherein “the integral scanner unit” (6 and 4ab) is “configured to allow the ablation laser and the notching laser to be emitted to positions adjacent to each other” (fig.2 shows laser beams 3a and 3b adjacent to each other on the workpiece) on “the electrode sheet” (MPEP 2115. Workpiece 1).
Claim Rejections - 35 USC § 103
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda et al. (US 20090057284) [embodiment fig.2] in view of Fukuda et al. (US 20090057284) [embodiment fig.3].
Regarding claim 2, Fukuda et al. [embodiment fig.2] discloses “the integral scanner unit” (6 and 4ab. [0040] Next, the control device 8 generates a command to the adjusting mechanism 6 to adjust the first reflecting mirror 4ab. This suggest 6 and 4ab are connected in order to control the scanning mirror 4ab) except for a reflector unit that allows configured to allow the laser to be transmitted therethrough or reflected therefrom, wherein the ablation laser and the notching laser come from the ablation laser source unit and the notching laser source unit, respectively, and enter the integral scanner unit via the reflector unit.
Fukuda et al. (US 20090057284) [embodiment fig.3] teaches “a reflector unit” (fig.3, 4d) that allows configured to allow “the laser” (fig.3, 3a) to be transmitted therethrough or reflected therefrom, wherein “the ablation laser and the notching laser come from the ablation laser source unit and the notching laser source unit” (3a, 2a; 3b 2b), respectively, and enter “the integral scanner unit” (at least 4bb) via “the reflector unit” (4d). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Fukuda et al. [embodiment fig.2] with Fukuda et al. [embodiment fig.3], by adding Fukuda et al.’s [embodiment fig.3]’s deflector 4d to Fukuda et al. [embodiment fig.2]’s system, to process multiple locations at the same time to increasing production speed and efficiency.
Allowable Subject Matter
Claims 3-7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 11 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.
The allowability cannot be determined with respect to claims 8-10 due to 35 USC 112 1st rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIMMY CHOU whose telephone number is (571)270-7107. The examiner can normally be reached Mon-Friday.
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/JIMMY CHOU/Primary Examiner, Art Unit 3761