DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/22/2025 has been entered.
Specification
The disclosure is objected to because of the following informalities:
[0058] of instant publication application recites “wherein the spot size of the beam waste is less than about 2.5 cm2; wherein the spot size of the beam waste is less than about 2.5 cm2, and the waist length is at least about 2 ft; wherein the spot size of the beam waste is less than about 2.5 cm2 … wherein the spot size area at the beam waste is less than about 2.5 cm2 … wherein the spot size of the beam waste is less than about 2.5 cm2 … wherein the spot size of the beam waste is less than about 2.0 cm2” should be changed to “wherein the spot size of the beam waist is less than about 2.5 cm2; wherein the spot size of the beam waist is less than about 2.5 cm2, and the waist length is at least about 2 ft; wherein the spot size of the beam waist is less than about 2.5 cm2 … wherein the spot size area at the beam waist is less than about 2.5 cm2 … wherein the spot size of the beam waist is less than about 2.5 cm2 … wherein the spot size of the beam waist is less than about 2.0 cm2”.
[0060] of instant publication application recites “wherein the spot size of the beam waste is less than about 2.5 cm2; wherein the spot size of the beam waste is less than about 2.5 cm2 … wherein the spot size of the beam waste is less than about 2.5 cm2” should be changed to “wherein the spot size of the beam waist is less than about 2.5 cm2; wherein the spot size of the beam waist is less than about 2.5 cm2 … wherein the spot size of the beam waist is less than about 2.5 cm2”.
[0165] of instant publication application recites “the beam waste” should be changed to “the beam waist”.
[0232] of instant publication application recites “a beam waste having a length of about 2.5 feet” should be changed to “a beam waist having a length of about 2.5 feet”.
[0233] of instant publication application recites “a beam waste having a length of 8 feet” should be changed to “a beam waist having a length of 8 feet”.
Appropriate correction is required.
Claim Objections
Claims 93 and 97 are objected to because of the following informalities:
Claim 93 recites “Class 1 product” should be changed to “Class I product”.
Claim 97 recites “Class 1 product” should be changed to “Class I product”.
Appropriate correction is required.
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 cooling means” in claim 60 at line 5.
“the optics assembly configured to convey a laser beam from a tool, the laser beam having a focal length, a spot size, a spot shape” in claim 60 at line 7.
“a means for mechanically removing laser effected earth” in claim 60 at line 11.
“an adjustment means” in claim 92 at line 2.
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.
“a cooling means” (claim 60) is interpreted as “a water cooled connector 2731” of laser tool. See [0163] of instant publication application which can be replaced with the fig.8’s laser tool.
“the optics assembly” (claim 60) is interpreted as “An optical fiber cable 1614 having an optical fiber is connected to and in optical communication with the laser tool and the umbilical 1615” See [0139] and [0058] of instant publication application.
“a means for mechanically removing” (claim 60) is interpreted as “Arm 1608 supports and positions cutting wheel 1618 and arm 1609 supports and positions cutting wheel 1617” See [0139] of instant publication application.
“an adjustment means” (claim 92) is interpreted as “adjustment arm 1512 and hydraulic cylinders 1516, 1518” (para.0136 of instant publication application).
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 60-61, 73-80 and 97-101 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 60 recites “the optical assembly configured to convey a laser beam from a tool”. As best understood, claim 60 directed to fig.8. Fig.8 shows optical assembly 1614 and 1614 convey a laser beam to a laser tool 1611. For example: [0139] of instant publication application discuss about the laser tool 1611. This suggest that the optical assembly convey a laser from a tool 1611 if the optical assembly is to convey the laser beam to the laser tool. Currently, the specification does not teach or suggest that “the optical assembly configured to convey a laser beam from a tool”.
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 60-61, 73-80, 92-95 and 97-101 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 60 recites “the spot size of the waste of the laser beam”. It is unclear what refers to the spot size of the waste of the laser beam. As best understood, it should be changed to “the spot size of the waist of the laser beam”.
Claim 60 recites “the optical assembly configured to convey a laser beam from a tool”. As best understood, claim 60 directed to fig.8. Fig.8 shows optical assembly 1614 and 1614 convey a laser beam to a laser tool 1611. It is unclear what the tool refers to. For example: [0139] of instant publication application discuss about the laser tool 1611. Then, it is unclear as to how the optical assembly convey a laser from a tool 1611 if the optical assembly is to convey the laser beam to the laser tool.
Claim 61 recites “the tool has a stand off distance of at least 10 ft”. It is unclear as to the tool has a stand off distance of at least 10 ft with respect to what object.
Claim 92 recites “the position of the rotating head is adjusted” at line 3. There is insufficient antecedent basis regarding this claim limitation.
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The allowability cannot be determined with respect to claims 60-61, 73-80 and 97-101 due to 35 USC 112 1st paragraph above.
Claim92 would be allowable if rewritten or amended 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.
Response to Arguments
Applicant's arguments filed on 09/22/2025 have been fully considered but they are not persuasive.
Applicant argues “Claim construction …applicant is entitled to full scope of these 112 claim terms, and the office action cannot restriction or other limit this scope of protection” on page 6 of remark.
In response, examiner noted that claim interpretation is not a rejection. In this case, 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.
With respect to objections, examiner has withdrawn the claim objections with respect to claims 60 and 84.
Examiner noted that there is additional 35 USC 112 issues with respect to claims 60-61 and 92.
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.
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, Helena Kosanovic can be reached at (571) 272-9059. 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.
/JIMMY CHOU/Primary Examiner, Art Unit 3761