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 .
Response to Arguments
Applicant's arguments filed 26 May 2026 have been fully considered but they are not persuasive.
Applicant argues that claim 8 has been amended to overcome the minor informalities raised in the previous Office action (p. 8), but one informality remains.
Applicant argues that claims 1 and 10 are now definite because of the claimed details regarding the branch distance L and the machining speed V (p. 9), but this argument is unpersuasive because it does not speak to the allegations that the degradation of machining quality is subjective with unclear bounds, and that claim 1 is defined based upon the unclaimed object worked upon in a way that renders the exact required structure of the claim unclear.
Applicant argues that claim 8 is definite because the disclosure explains that the connecting optical system is configured to selectively guide a plurality of beams of branch light branched by a branching element to the two lenses of the condenser lens (p. 9). This argument is unpersuasive since it does not address the point raised by the Office about how “it’s unclear if what’s being discussed here is somehow different from, or the same as, what is part of claim 1.”
Applicant supplies neither argument nor amendment with respect to the rejection of claim 10 for lack of antecedent basis for the limitations “the first condenser lens” and “the second condenser lens.”
Because Applicant’s arguments against the rejection of claim 1 under § 112(b) are unpersuasive, Applicant’s arguments against the rejection of claim 1 in view of Karasaki are unpersuasive, since the Office still finds that the “deterioration of machining quality” is arbitrary.
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8, line 13, should be amended to recite “the plurality of beams of
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.
Claims 1–10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites that “a time period τ is expressed as τ = L/V . . . wherein the laser machining apparatus is configured . . . to satisfy τ > τ1, wherein τ1 is a threshold value of the time period when deterioration of machining quality of the second groove occurs.” The language renders the claim indefinite because what qualifies as the “deterioration of machining quality” is unclear since “deterioration” is a relative and subjective quality. Furthermore, the claim is indefinite because it is so dependent upon the object worked upon (i.e. the wafer, see MPEP § 2115), which is not positively recited (given that the language of the “wafer” in the preamble is colored by the language of “configured to,” which suggests that part of the claim is only intending to define functionality rather than structure), that it’s unclear how this language should be understood to limit the claim. Because any laser beam capable of machining, operating on any type of wafer or workpiece, can result an almost limitless number of time periods upon which a deterioration of machining quality can be found (particularly using a subjective standard), it seems that the time period τ is arbitrary.
Claim 8 provides for “a branching element” that guides a plurality of beams of branch light to the second condenser lens, but claim 1 already provides for “a branching element” and “a second condenser lens configured to focus the plurality of beams of the branch light branched by the branching element.” Therefore, claim 8 is indefinite because it’s unclear if what’s being discussed here is somehow different from, or the same as, what is part of claim 1.
Claim 10 recites limitations similar to those in claim 1, but is directed to a method claim, and is therefore only indefinite on the grounds that the “deterioration” is a relative and subjective quality.
Claim 10 recites “the first condenser lens” (ll. 9–10) and “the second condenser lens” (l. 14), neither of which have antecedent basis.
Claims 3–7 and 9 are rejected due to dependency upon a rejected claim.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karasaki et al. (JP 2010-207879A, cited by Applicant, translation provided by the Office).
Karasaki discloses a laser machining apparatus (title) configured to perform edge cutting for forming two first grooves parallel to each other (11) along a street (6b), and hollowing for forming a second groove (12) between the two first grooves (see fig. 1) with a laser optical system (1 and associated components) while moving the laser optical system relative to a table that holds a wafer in a machining feed direction along the street of the wafer (“The processing table 7 moves in the X and Y axes (left and right and up and down in the drawing) and rotates, and the processing position is moved by relatively moving the laser beam and the brittle substrate 6”),
the laser optical system including:
a laser light emitting system (1) configured to emit two beams of first laser light (via 4a, 3a, and 5a) for the edge cutting and a second laser light (via 4b, 3b, and 5b) for the hollowing;
a first condenser lens (5a) configured to focus the two beams of first laser light emitted from the laser light emitting system onto the street to be machined;
a branching element (3b) configured to branch the second laser light emitted from the laser light emitting system into a plurality of beams of branch light along the machining feed direction (see fig. 3), and
a second condenser lens (5b) configured to focus the plurality of beams of the branch light branched by the branching element onto the street to be machined (see fig. 3),
wherein a time period τ is expressed as τ=L/V, where L is a branch distance, which corresponds to spacing between adjacent leading and trailing spots for each beam of the branch light focused on the street by the second condenser lens, V is a machining speed, which corresponds to a speed of relative movement, and τ is the time period taken until the trailing spot overlaps a machining position of the leading spot (as the table is capable of moving the wafer in both X and Y axes, it is capable of establishing leading and trailing spots for each beam of the branch light focused on the street by the second condenser lens even if it is not shown as being used in this way; furthermore, the reference necessarily involves a branch distance from this, in addition to a machining speed given that the table moves, resulting in some time period), and
wherein the laser machining apparatus is configured to perform the hollowing with at least one of the branch distance L and the machining speed V adjusted by the laser optical system (ibid.) to satisfy τ1>τ is satisfied, where τ1 is a threshold value of the time period when deterioration of machining quality of the second groove occurs (given that “deterioration” is a relative term (see the § 112(b) rejection above), this limitation is broad and not effectively limiting).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Karasaki.
Karasaki discloses that the second laser light is a pulsed laser light (evident from “pulse width, pulse frequency”).
Karasaki does not disclose that at least one of the machining speed and a repetition frequency of the second laser light is adjusted to make an overlap rate in the machining feed direction of a next spot to be irradiated to the spot be 50% or less, the spot and the next spot being different from each other.
However, Karasaki broadly teaches that the pulsed laser light width and frequency are selectable.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide Karasaki with a broadly adjustable pulsed laser light to allow a user to provide appropriate laser energy to a workpiece for suitable processing, including adjustability that would permit a 50% or less overlap rate at a next spot to be irradiated.
Comment: Although the language of this claim is phrased mostly like a method, the Office understands the claim to be speaking about the capabilities of the apparatus, which also renders it definite. See the last paragraph of MPEP § 2173.05(p)).
Allowable Subject Matter
Claims 2–8 would be allowable if rewritten to overcome the objection, as well as the rejections under 35 U.S.C. 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 10 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action.
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 John J. Norton whose telephone number is (571) 272-5174. The examiner can normally be reached 9:00 AM to 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward (Ned) F. Landrum can be reached at (571) 272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN J NORTON/Primary Examiner, Art Unit 3761
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