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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitations
“the housing has an entry aperture configured to receive an optical fiber, and further comprising a first optical device, wherein the first optical device is arranged within the housing to receive a diverging laser beam from an optical fiber in the entry aperture and is configured to emit a further diverging laser beam” in claims 6 and 16;
“a second optical device, wherein the second optical device is arranged within the housing to receive the further diverging laser beam from the first optical device and is configured to emit a collimated laser beam” in claims 7 and 17;
“the output optical device is a third optical device arranged to receive the collimated laser beam from the second optical device” in claims 8 and 18
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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:
“an output optical device configured to emit a converging laser beam” in claims 1 and 11
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.
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 6-8 and 16-18 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.
Regarding claims 6-8 and 16-18, the limitations in claims 6-8 and 16-18 are lacking support in the specification, because the specification does not disclose a single embodiment that includes every limitations of claims 1 and 6-8, and claims 11 and 16-18. The limitations in claims 1 and 11 are shown in the embodiment of figures 9-12, and the limitations of claims 6-8 and 16-18, such as the features of the first optical device, second optical device, and the third optical device, are not shown in the embodiment. Therefore, the limitation in claims 6-8 and 16-18 are lacking written description requirement.
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.
Claim limitation “an output optical device configured to emit a converging laser beam” in claim 1 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claims 10 and 20, the limitation "the first, second, and third optical devices" is insufficient antecedent basis for this limitation in the claim. In addition, it is unclear whether “the first, second, and third optical devices” is part of the invention, since claims 1, 9, 11 and 19 do not introduce the first, second, and third optical devices.
For the purpose of examination, the limitation "the first, second, and third optical devices" is interpreted to a first, a second, and a third optical devices.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-2, 4-5, and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsumura (JP 4805626B2).
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Regarding claim 1, Matsumura teaches an apparatus (apparatus 31; fig.2) for directing a laser beam to a workpiece surface, the apparatus comprising:
a housing (housing of apparatus 31) having a laser beam exit aperture (laser beam exit aperture; see the annotation of fig.2);
an output optical device (intermediate lens 19 and lens 21) configured to emit a converging laser beam (See fig.2), wherein the converging laser beam (laser pulse light L) is centered on an axis (beam axis of laser pulse light L) and directed outward from the housing (housing of apparatus 31) through the exit aperture (laser beam exit aperture) toward a workpiece surface (workpiece surface 27);
a water nozzle outlet (spray nozzle 35) arranged to discharge a stream of overlay water toward the workpiece surface (see para.[0023] “the liquid (water) W supplied through the water conduit 34 is continuously sprayed onto the work surface 27 from a spray nozzle 35 provided on the front surface of the irradiation device 32, forming a thin layer of water on the work surface 27.”); and
an air nozzle outlet (air nozzle 37) arranged to discharge a stream of air in a direction across the axis at a location axially between the exit aperture and the stream of overlay water (See fig.2 and para.[0023] “compressed air is sprayed onto the outer surface of the front lens 21 from a compressed air nozzle 37”).
Regarding claim 2, Matsumura teaches the water nozzle outlet (spray nozzle 35) and the air nozzle outlet (air nozzle 37) are fixed to the housing (housing of apparatus 31) such that the water nozzle outlet (spray nozzle 35), the air nozzle outlet (air nozzle 37), and the housing (housing of apparatus 31) are movable together in orientations that are consistent relative to each other (See fig.2, spray nozzle 35, air nozzle 37, and the housing are fixed together and movable together.).
Regarding claim 4, Matsumura teaches the air nozzle outlet (air nozzle 37) is spaced from the output optical device (lens 21) along the axis (See fig.2, air nozzle 37 is spaced form lens 21.).
Regarding claim 5, Matsumura teaches the air nozzle outlet (air nozzle 37) is configured as a slot with an arcuate configuration reaching circumferentially about the axis (See fig.2, air nozzle 37 is arranged circumferentially about the beam axis.).
Regarding claim 9, Matsumura teaches the housing (housing of apparatus 31) comprises an elongated tubular body having a longitudinal axis (See fig.2, the housing of apparatus 31 has an elongated tubular body having a longitudinal axis.), and the output optical device (intermediate lens 19 and lens 21) is configured to center the converging laser beam on the longitudinal axis of the housing (See fig.2, intermediate lens 19 and lens 21 is capable to center laser beam on an longitudinal axis of the housing.).
Regarding claim 10, Matsumura teaches the first, second, and third optical devices are lenses (intermediate lens 18. 19, and front lens) centered on the longitudinal axis of the housing (See fig.2).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 3, 11-15, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura in view of Suzuki (US 2020/0009742).
Regarding claim 3, Matsumura teaches the axis is a first axis (See the rejection of claim 1), but does not explicitly teach a robotic device, wherein the robotic device supports the housing for rotation about the first axis and for movement pivotally about a second axis skewed to the first axis.
However, Suzuki teaches in the same field of endeavor of laser apparatus comprising a robotic device (robot 2), wherein the robotic device (robot 2) supports a housing of laser head (housing of tool 16) for rotation about the first axis and for movement pivotally about a second axis skewed to the first axis (see fig.1, robot 2 is capable to move pivotally about a axis skewed to a beam axis.).
It would have been obvious to one of ordinary skill in the art before the effective filling date the claimed invention was made to modify the apparatus of Matsumura by adding a robotic device for moving the laser head as taught by Suzuki, in order to provide a automatic machine that operates independently of a movable member is attached to the movable member, can improve the accuracy of location of the movable member and the tool during the operations of the movable member and the tool (para.[0005] of Suzuki)
Regarding claim 11, Matsumura teaches an apparatus (apparatus 31; fig.2) for directing a laser beam to a workpiece surface, the apparatus comprising: a housing (housing of apparatus 31) having a laser beam exit aperture (laser beam exit aperture; see the annotation of fig.2); an output optical device (intermediate lens 19 and lens 21) configured to emit a converging laser beam through the exit aperture (laser beam exit aperture) toward the workpiece surface (workpiece surface 27); a water nozzle outlet (spray nozzle 35) arranged to discharge a stream of overlay water toward the workpiece surface (see para.[0023] “the liquid (water) W supplied through the water conduit 34 is continuously sprayed onto the work surface 27 from a spray nozzle 35 provided on the front surface of the irradiation device 32, forming a thin layer of water on the work surface 27.”); an air nozzle outlet (air nozzle 37) arranged to discharge a stream of air across the converging laser beam (See fig.2 and para.[0023] “compressed air is sprayed onto the outer surface of the front lens 21 from a compressed air nozzle 37”); but does not explicitly teach a robotic device supporting the housing for rotation about a first axis and for movement pivotally about a second axis skewed to the first axis.
However, Suzuki teaches in the same field of endeavor of laser apparatus comprising a robotic device (robot 2), wherein the robotic device (robot 2) supports a housing of laser head (housing of tool 16) for rotation about a first axis and for movement pivotally about a second axis skewed to the first axis (see fig.1, robot 2 is capable to move pivotally about a axis skewed to a beam axis.).
It would have been obvious to one of ordinary skill in the art before the effective filling date the claimed invention was made to modify the apparatus of Matsumura by adding a robotic device for moving the laser head as taught by Suzuki, in order to provide a automatic machine that operates independently of a movable member is attached to the movable member, can improve the accuracy of location of the movable member and the tool during the operations of the movable member and the tool (para.[0005] of Suzuki)
Regarding claim 12, Matsumura teaches the water nozzle outlet (spray nozzle 35) and the air nozzle outlet (air nozzle 37) are fixed to the housing (housing of apparatus 31) such that the water nozzle outlet (spray nozzle 35), the air nozzle outlet (air nozzle 37), and the housing (housing of apparatus 31) are movable together in orientations that are consistent relative to each other (See fig.2, spray nozzle 35, air nozzle 37, and the housing are fixed together and movable together.).
Regarding claim 13, Matsumura teaches the converging laser beam (laser pulse light L) is centered on the first axis (beam axis of laser pulse light L), the water nozzle outlet (spray nozzle 35) arranged to discharge a stream of overlay water toward the workpiece surface in a direction skewed to the first axis (see para.[0023] “the liquid (water) W supplied through the water conduit 34 is continuously sprayed onto the work surface 27 from a spray nozzle 35 provided on the front surface of the irradiation device 32, forming a thin layer of water on the work surface 27.”), and the air nozzle outlet (air nozzle 37) is arranged to discharge the stream of air in a direction across the first axis at a location axially between the exit aperture and the stream of overlay water (See fig.2 and para.[0023] “compressed air is sprayed onto the outer surface of the front lens 21 from a compressed air nozzle 37.” Air nozzle 37 is located between the exit aperture and the stream of overlay water. ).
Regarding claim 14, Matsumura teaches the air nozzle outlet (air nozzle 37) is spaced from the output optical device (lens 21) along the axis (See fig.2, air nozzle 37 is spaced form lens 21.).
Regarding claim 15, Matsumura teaches the air nozzle outlet (air nozzle 37) is configured as a slot with an arcuate configuration reaching circumferentially about the axis (See fig.2, air nozzle 37 is arranged circumferentially about the beam axis.).
Regarding claim 19, Matsumura teaches the housing (housing of apparatus 31) comprises an elongated tubular body having a longitudinal axis (See fig.2, the housing of apparatus 31 has an elongated tubular body having a longitudinal axis.), and the output optical device (lens 21) is configured to center the converging laser beam on the longitudinal axis of the housing (See fig.2, lens 21 is capable to center laser beam on an longitudinal axis of the housing.).
Regarding claim 20, Matsumura teaches the first, second, and third optical devices are lenses (intermediate lens 18. 19, and front lens) centered on the longitudinal axis of the housing (See fig.2).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura in view of Ortiz (US 5,045,669).
Regarding claim 6, Matsumura teaches the housing has an entry aperture (entry aperture; see the annotation of fig.2) configured to receive an optical fiber (optical fiber 12), but does not explicitly teach a first optical device, wherein the first optical device is arranged within the housing to receive a diverging laser beam from an optical fiber in the entry aperture and is configured to emit a further diverging laser beam.
However, Ortiz teaches in the same field of endeavor of a laser apparatus, comprising a first optical device (beam expanding lens 426), wherein the first optical device (beam expanding lens 426) is arranged within a housing (housing of output coupler 412) to receive a diverging laser beam from an optical fiber (Optical fiber 410) in an entry aperture and is configured to emit a further diverging laser beam (diverging beam 436) (See fig.11)
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It would have been obvious to one of ordinary skill in the art before the effective filling date the claimed invention was made to modify the apparatus of Matsumura by adding an optical device is arranged within the housing and configured to emit a diverging laser beam as taught by Ortiz, in order to provide a desired beam profile, since applicant does not disclose that a diverging laser beam solved any stated problem or is for any particular purpose, and therefore that beam profile is an obvious design choice (MPEP 2144).
Regarding claim 7, Matsumura teaches a second optical device (intermediate lens 18), wherein the second optical device (intermediate lens 18) is arranged within the housing to receive the further diverging laser beam from the first optical device and is configured to emit a collimated laser beam (See fig.2, intermediate lens 18 is located in the housing to receive a diverging laser beam and emit a collimated laser beam).
Regarding claim 8, Matsumura teaches the output optical device is a third optical device (intermediate lens 19) arranged to receive the collimated laser beam from the second optical device (intermediate lens 18) (See fig.2)
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over the modification of Matsumura and Suzuki in view of Ortiz (US 5,045,669).
Regarding claim 16, Matsumura teaches the housing has an entry aperture (entry aperture; see the annotation of fig.2) configured to receive an optical fiber (optical fiber 12), but does not explicitly teach a first optical device, wherein the first optical device is arranged within the housing to receive a diverging laser beam from an optical fiber in the entry aperture and is configured to emit a further diverging laser beam.
However, Ortiz teaches in the same field of endeavor of a laser apparatus, comprising a first optical device (beam expanding lens 426), wherein the first optical device (beam expanding lens 426) is arranged within a housing (housing of output coupler 412) to receive a diverging laser beam from an optical fiber (Optical fiber 410) in an entry aperture and is configured to emit a further diverging laser beam (diverging beam 436) (See fig.11)
It would have been obvious to one of ordinary skill in the art before the effective filling date the claimed invention was made to modify the apparatus of Matsumura by adding an optical device is arranged within the housing and configured to emit a diverging laser beam as taught by Ortiz, in order to provide a desired beam profile, since applicant does not disclose that a diverging laser beam solved any stated problem or is for any particular purpose, and therefore that beam profile is an obvious design choice (MPEP 2144).
Regarding claim 17, Matsumura teaches a second optical device (intermediate lens 18), wherein the second optical device (intermediate lens 18) is arranged within the housing to receive the further diverging laser beam from the first optical device and is configured to emit a collimated laser beam (See fig.2, intermediate lens 18 is located in the housing to receive a diverging laser beam and emit a collimated laser beam).
Regarding claim 18, Matsumura teaches the output optical device is a third optical device (intermediate lens 19) arranged to receive the collimated laser beam from the second optical device (intermediate lens 18) (See fig.2)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRIS Q LIU whose telephone number is (571)272-8241. The examiner can normally be reached Mon-Fri 9:00-6:00.
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/CHRIS Q LIU/Primary Examiner, Art Unit 3761