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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/21/2025 has been considered by the Examiner and made of record in the application file.
Response to Amendment
The amendment filed 11/13/2025 has been entered. Claim 2 was previously canceled. Claims 1 and 4 have been amended. Applicant’s amendments have overcome the objections previously set forth in the Non-Final Office Action mailed 08/14/2025.
Response to Arguments
Applicant's arguments filed 11/13/2025 have been fully considered and are appreciated but they are not persuasive.
Applicant argues that amended independent claims 1 and 4 are not disclosed by the prior art and further that the claimed invention would not be obvious in light of the cited art as any combination of the teachings thereof would not involve routine optimization. However, examiner respectfully disagrees.
Applicant argues that claims 1 and 4 recite “the objective optical system still being diffraction limited”, therefore the claimed subject matter can secure condensing performance. However, it is implicit from ¶0010 of Iwasaki that the system would be diffraction limited to ensure a small spot size, i.e. perform sufficient condensing of the laser spot. Further, one would necessarily desire the system to remain diffraction limited for the purpose of ensuring a small spot size and high quality.
Applicant argues that according to the claimed conditional expression, the claimed subject matter can acquire a sufficient NA of the objective lens, make it easier to design the objective lens, and ensure the distance between the objective lens and the medium is proper – therefore securing condensing performance, easily designing the objective lens, and appropriately arranging the objective lens with respect to the medium. However, these are all factors that contribute to ease of manufacturing and ensuring the system works well, and are therefore not outside the scope of routine optimization. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case, the cited art has all of the claimed elements including the objective lens, a diopter adjusting optical system that can be given a negative and positive power selectively to correct spherical aberration, and a medium. One would be motivated to have the system satisfy the conditional expression for the purpose of determining the optimal distance between the objective lens and the medium such that the focal point is inside the medium and while keeping the system compact.
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 and 3-9 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 claims 1 and 4, the limitation “a focal length f of the objective lens and a numerical aperture NA of the objective lens satisfy a following conditional expression with respect to a refractive index n of the medium
0.1
<
f
∙
N
A
n
<
1.4
” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
The conditional expression is unclear because the endpoints of the range does include units as would be appropriate for the values of the claim. Without units, one of ordinary skill in the art would not be apprised as to the scope of the invention (see MPEP 2173.05(c)). The formula for NA is n*sin(θ), thus the expression would reduce to f*sin(θ). Therefore the values should have units of length – the same units as the focal length f. It is unclear if the units of 0.1 and 1.4 are mm, cm, or any other unit of length. Due to the values of various distances given throughout the specification, examiner assumes that the expression is in units of mm.
For the purposes of examination, examiner assumes “
0.1
<
f
∙
N
A
n
<
1.4
“ as “
0.1
mm
<
f
∙
N
A
n
<
1.4
mm
”.
Claim 3 is dependent on claim 1 and therefore inherits the same issues.
Claims 5-9 are dependent on claim 4 and therefore inherit the same issues.
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) 1, 4-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki et al. (JP 2004171682 A), hereinafter Iwasaki, in view of Haliyo et al. (US 20230398629 A1), hereinafter Haliyo.
Regarding independent claim 4, Iwasaki discloses an optical system comprising:
an objective lens (5; ¶0016; Figs. 1, 5); and
a diopter adjusting optical system (4; ¶0016; Figs. 1, 5) arranged on an opposite side of a medium (6; ¶0016; Figs. 1, 5) with respect to the objective lens (5) (Figs. 1, 5), wherein the diopter adjusting optical system (4) is given a positive refractive power (¶0031; Fig. 5) to change a depth of a focal point of laser light (11, 12; ¶0016; Figs. 1, 5) inside the medium (6) (Fig. 5), wherein
a spherical aberration occurring inside the medium (6) with a change of the depth of the focal point by the diopter adjusting optical system (4) and a spherical aberration occurring by changing a distance from the objective lens (5) to a surface of the medium cancel each other out (inherent from ¶0010 and ¶0046, because this is how spherical aberration correction works) to change the depth of the focal point inside the medium (6) (Fig. 5) with the objective optical system still being diffraction limited (implicit from ¶0010 that the system would be diffraction limited to ensure a small spot size and therefore good quality).
Iwasaki does not disclose the diopter adjusting optical system is given a positive and negative refractive power selectively, and wherein a focal length f of the objective lens and a numerical aperture NA of the objective lens satisfy a following conditional expression with respect to a refractive index n of the medium
0.1
<
f
∙
N
A
n
<
1.4
.
However, Haliyo teaches a similar optical system comprising an objective lens (5; ¶0036; Fig. 1) and a diopter adjusting optical system (4; ¶0037; Fig. 1), wherein the diopter adjusting optical system (4) is given a positive and negative refractive power selectively (¶0013; Fig. 11).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Iwasaki to incorporate the diopter adjusting optical system of Haliyo for the purpose of being able to give it both a positive and negative refractive power and further therefore more effectively focus the laser light and correct spherical aberration.
Neither Iwasaki nor Haliyo explicitly disclose a focal length f of the objective lens and a numerical aperture NA of the objective lens satisfy a following conditional expression with respect to a refractive index n of the medium
0.1
<
f
∙
N
A
n
<
1.4
.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case Iwasaki in view of Haliyo discloses all the claimed elements of the optical system, fulfilling the general conditions of the claim. One would be motivated to have the f*NA/n value satisfy the above expression for the purpose of determining a distance between the objective lens and the medium to ensure the focal point is inside the medium while keeping the system compact.
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the f*NA/n value to be between 0.1 mm and 1.4 mm for the purpose of determining a distance between the objective lens and the medium to ensure the focal point is inside the medium while keeping the system compact.
Regarding claim 5, Iwasaki in view of Haliyo discloses the objective optical system according to claim 4, as set forth above. Iwasaki further discloses the diopter optical system (4) includes one of a focal length variable lens, a transmission spatial light modulator, a deformable mirror (4; ¶0016; Figs. 1, 5), and a reflection spatial light modulator.
Regarding claim 7, Iwasaki in view of Haliyo discloses the objective optical system according to claim 4, as set forth above. Iwasaki further discloses an optical system (8; ¶0039; Fig. 5) between the diopter adjusting optical system (4) and the objective lens (5) (¶0039; Fig. 5), the optical system (8) relaying such that the diopter adjusting optical system (4) is conjugate with the objective lens (5) (¶0039; Fig. 5).
Regarding independent claim 1, under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986) see MPEP 2112.02. Since claim 1 recites the normal use of the device in claim 4, claim 1 is rejected as inherent.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki (JP 2004171682 A) in view of Haliyo (US 20230398629 A1) and further in view of Kirihara (US 20180309018 A1).
Regarding claim 3, Iwasaki in view of Haliyo discloses the spherical aberration adjustment method for the objective optical system according to claim 1, as set forth above. Iwasaki and Haliyo fail to teach the medium has a refractive index of 1.7 or higher.
However, Kirihara teaches a laser processing device with an objective optical system (12; ¶0024; Fig. 2), wherein the medium (2; ¶0024; Fig. 2) has a refractive index of 1.7.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Iwasaki and Haliyo to incorporate the teachings of Kirihara in order to use media with a refractive index of 1.7 for the purpose of being able to work with more durable materials, such as sapphire, which is often used in lighting devices, personal computers, mobiles phones, etc.
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki (JP 2004171682 A) in view of Haliyo (US 20230398629 A1) and further in view of Hayashi et al. (US 20050280907 A1), hereinafter Hayashi.
Regarding claim 6, Iwasaki in view of Haliyo discloses the objective optical system of claim 4, as set forth above. Iwasaki and Haliyo fail to teach the objective lens has a numerical aperture of 0.6 to 0.9.
However, Hayashi teaches a similar objective optical system for correcting spherical aberration, wherein the objective lens (5; Fig. 1) has a numerical aperture of 0.8 or more (¶0009).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Iwasaki and Haliyo to incorporate the teachings of Hayashi to set the numerical aperture of the objective lens to be 0.8 or more for the purpose of collecting more light and focusing the light more tightly. It is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see e.g. MPEP 2144.05).
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki (JP 2004171682 A) ) in view of Haliyo (US 20230398629 A1) and further in view of Suzuki (US 5270860 A).
Regarding claim 8, Iwasaki in view of Haliyo discloses the objective optical system according to claim 4. Iwasaki and Haliyo fail to teach a spherical aberration adjustment mechanism that moves partial lenses within the objective lens in a direction of an optical axis and thus adjusts a spherical aberration of the objective lens.
However, Suzuki teaches an objective lens further comprising a spherical aberration adjustment mechanism (col. 2 lines 30-34) that moves partial lenses (G2; col. 2 lines 55-59; Fig. 1) within the objective lens (Fig. 1) in a direction of an optical axis (col. 2 lines 55-59) and thus adjusts a spherical aberration of the objective lens (col. 2 lines 30-34, 55-59).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Iwasaki and Haliyo to incorporate the teachings of Suzuki to be able to move partial lenses within the objective lens for the purpose of being able to further correct spherical aberration more effectively.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki (JP 2004171682 A) ) in view of Haliyo (US 20230398629 A1) and further in view of Kubo (US 20210170523 A1).
Regarding claim 9, Iwasaki in view of Haliyo discloses the objective optical system according to claim 4, the objective optical system (Fig. 5) condensing laser light (11, 12) to a focal point inside a medium (6) (Fig. 5). Iwasaki and Haliyo fail to teach a laser machining device comprising this objective optical system.
However, Kubo teaches a laser machining device (1; ¶0016; Fig. 1) with a similar objective optical system with a variable focal length.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Iwasaki and Haliyo to incorporate the teachings of Kubo to include the objective optical system of Iwasaki in the laser machining device of Kubo for the purpose of correcting spherical aberration in a laser machining device.
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 NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 8-5.
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, Ricky Mack can be reached at (571)272-2333. 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.
/NATASHA NIGAM/Examiner, Art Unit 2872 January 23rd, 2026
/RICKY L MACK/Supervisory Patent Examiner, Art Unit 2872