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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the abstract is an out-of-context reproduction of part of the claim. For example, it mentions a nondescript “second laser light,” a nondescript “second condenser lens,” and a nondescript “second groove” without mentioning any first laser light, condenser lens, or groove, leading to confusion. The abstract should narratively explain the core components, and inventive feature, of the disclosed invention. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8 recites “a plurality of beams of the branch light” (ll. 7–8), “a plurality of beams of the branch light” (ll. 9–10), and “a plurality of beams of the beams of branch light” (l. 13). It’s the Office’s understanding that each of these pluralities are the same as the one in claim 1, and therefore, each of these should recite “the plurality of beams of the branch light,” including the last recitation, where its atypical formulation seems needlessly differentiated.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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), 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), 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), 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:
The branching element in claim 1 (“For example, a diffractive optical element, a refractive optical element, a prism, and a combination thereof are used as the branching element 35”; the Office further notes that the disclosure provides that “The branching element 31 (corresponding to the bifurcating element of the presently disclosed subject matter) may use, for example, a half mirror, or, in the same manner as the branching element 35, a diffractive optical element, a refractive optical element, a prism, and a combination thereof”).
The first and second light forming elements in claims 2 and 3 (“for example, a Diffractive Optical Element (DOE) is used”).
The first and second light forming element rotating mechanisms of claims 5–7 (“the first rotating mechanism 44 (which corresponds to a first light forming element rotating mechanism of the presently disclosed subject matter) includes, for example, a motor and a drive transmission mechanism, and is configured to rotate the first light forming element 32 in a direction around the optical axis thereof under the control of the control device 30”).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f), it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (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).
Comment: The claims have numerous elements which are formulated as limitations to be interpreted under § 112(f), but are not, since one of ordinary skill in the art would readily understand the structure ascribable to the limitation. This includes the laser light emitting system of claim 1 and the connecting optical system of claim 8. See MPEP § 2181.I.C.: “Examiners will apply 35 U.S.C. 112(f) to a claim limitation that uses the term ‘means’ or generic placeholder associated with functional language, unless that term is (1) preceded by a structural modifier, defined in the specification as a particular structure or known by one skilled in the art, that denotes the type of structural device (e.g., ‘filters’), or (2) otherwise modified by sufficient structure or material for achieving the claimed function.”
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 . . . and τ > τ1 is satisfied, wherein τ1 is a threshold value of the time period when deterioration of machining quality of the second groove occurs.” These limitations render the claim indefinite for numerous reasons. Firstly, what qualifies as the “deterioration of machining quality” is unclear since “deterioration” is a relative and subjective quality. Secondly, it’s not clear what part of the claimed apparatus is responsible for ensuring that the time period τ satisfies the claimed conditions; in particular, it’s unclear if this is somehow achieved by a controller (unclaimed, with or without a sensor that would determine said machining quality deterioration), or if it is done by how the operator would use the apparatus (which would render the claim indefinite as an unclear product and process in the same claim (see MPEP § 2173.05(p).II.)). Even if the second issue is ignored entirely, the claim is still 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 2 recites provides for “a first laser light source configured to emit laser light under a condition corresponding to the edge cutting; a second laser light source configured to emit laser light under a condition corresponding to the hollowing.” The language renders the claim indefinite because it’s unclear what these “conditions” are supposed to be, particularly since these conditions are defined as “corresponding to” functional results of the apparatus. The specification seems to suggest that a “condition” means something like laser parameters, but the Office doubts this interpretation simply given how unusual it is, and how difficult it is to map it onto the claim given how it’s phrased.
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 9 recites 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 claim is indefinite because, the way it’s written, “the next spot” and “the spot” are the same, meaning it makes no sense to speak of any partial overlap. The Office guesses that “the spot” is supposed to refer to a different spot, and the claim should be amended to reflect that.
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 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
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.
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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 2, Karasaki does not disclose two laser sources, only one (laser oscillator 1), and given how Karasaki works, there is no need to add a second one when only one suffices.
Claims 4–7 each depend from claim 2.
Regarding claim 3, like the disclosed invention, Karasaki discloses light forming elements in the form of diffractive optical elements (3). However, diffractive optical element 3b was cited as the branching element for claim 1. Meanwhile, the disclosure makes clear that the second laser light forming element is distinct from the branching element. The branching element of claim 1 branches the second laser light into a plurality of beams of branch light, while the second light forming element of claim 3 forms (as in, shapes) the second laser lights (even if, as claimed and in the disclosure, it performs this shaping upstream of the branching).
Regarding claim 8, the claim is highly specific and not disclosed or suggested in the prior art.
Regarding claim 10, the claim requires both forming two first parallel grooves and hollowing for forming a second groove between the two first grooves while moving the laser optical system in a machining feed direction. The Office understands this language to mean that both the two first parallel grooves and the second groove are formed while the laser optical system is moved in one direction. The Office further understands “moving” in a “direction” to mean the laser optical system having one motion from an origin to a destination, and not so broadly that it means, for example, one or more movements that share a positive X-axis direction. The prior art shows two first parallel grooves and a second hollowing groove (see van der Stam (US Pub. 2016/0315010) and Hayashi (JP 2017-177194 A, cited by Applicant), and Norizumi et al. (JP 2015-154009 A, cited by Applicant). However, in each of these disclosures, the first and second grooves are formed from sequential steps where the laser optical system moves in a different direction.
Hoekstra et al. (US Pat. 6,211,488) is highly relevant prior art, but does not disclose two parallel grooves, nor using a condenser lens, nor would it have been obvious to one of ordinary skill in the art to use one given the particular beam shape.
Van der Stam et al. (US Pub. 2016/0013105) is also relevant (see fig. 5).
Conclusion
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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/JOHN J NORTON/ Primary Examiner, Art Unit 3761