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 Amendment
The amendment filed on 05/04/2026 has been entered. Claims 1-16 remain pending in the application. Claims 17-19 are new. Applicant’s amendments to the Specification, Drawings, and Claims have overcome each and every objection and 112(b) rejections previously set forth in the Office Action mailed on 01/15/2026 except for the 112(b) rejection repeated in this office action.
Claim Objections
Claim 11 is objected to because of the following informalities: status of claim 11 is mistakenly marked as withdrawn. Claim 11 has already been examined in the previous office action. The status should be original.
Claims 18 and 19 are objected to because of the following informalities: claims 18 and 19 recite “a plurality of ultrashort laser pulses are emitted in a first pulse train, wherein a temporal distance of the pulse trains”. The applicant is suggested to rephrase the claim as “a plurality of ultrashort laser pulses are emitted in pulse trains, wherein a temporal distance of the pulse trains”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 6 is 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 6 recites “Gauss-type”. It is not clear if the beam profile is Gaussian profile or something else.
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.
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(s) 1-2, 4, 6, 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mikolaschek et al., EP 1478602 (hereafter Mikolaschek) and further in view of Arai et al., US 9138913 (hereafter Arai).
Regarding claim 1,
A method for hardening a transparent material, the method comprising: directing a laser beam of ultrashort laser pulses of an ultrashort pulse laser toward the transparent material so as to introduce a material modification to the transparent material and cause a localized portion of a surface of the transparent material to harden. (Abstract in Mikolaschek teaches “the invention relates to a method for hardening glass, according to which the temperature of the glass surface is increased in a locally defined manner by exposing said surface to a laser beam (7), until the glass transition temperature is reached, and the locally heated glass surface (8) is then quickly cooled.”
Page 6, paragraph 6 teaches using a pulsed laser beam.
However, Mikolaschek is silent about ultrashort laser pulses of an ultrashort pulse laser.
Arai teaches “forming a plurality of lines at different depths within the material using tightly focused ultrashort laser pulses” in column 34, lines 45-50.)
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to use an ultrashort pulse laser as taught in Arai to the hardening method in Mikolaschek. One of ordinary skill in the art would have been motivated to do so “for generating patterns of laser-modified features below a surface of a transparent material” as taught in column 34, lines 40-45 in Arai.
Regarding claim 2,
The method as claimed in claim 1, wherein the transparent material is a glass or a polymer or a ceramic. (Abstract in Mikolaschek teaches “the invention relates to a method for hardening glass,”)
Regarding claim 4,
The method as claimed in claim 1, further comprising focusing the laser beam using an optical unit so as to dispose a focus region in the transparent material or on the surface of the transparent material. (Mikolaschek is silent about this.
Arai teaches “an optical system to focus the pulses and to form at least one feature within the material” in column 36, lines 5-10. Arai further teaches focusing the beam in the transparent material in Fig. 2.)
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Fig. 2 in Arai
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to focus the beam inside the transparent material as taught in Arai to the hardening method in Mikolaschek. One of ordinary skill in the art would have been motivated to do so because “At the beam waist location, the beam diameter is small enough to once again generate sufficient intensity for nonlinear absorption and subsequent laser modification to occur in the bulk of the material” as taught in column 11, lines 60-65 in Arai.
Regarding claim 6,
The method as claimed in claim 1, wherein the laser beam has a Gauss-type beam profile or a beam profile of a quasi non-diffractive beam. (Mikolaschek is silent about this.
Arai teaches a Gaussian beam profile in column 9, line 40.)
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to design a gaussian type beam profile as taught in Arai to the hardening method in Mikolaschek. One of ordinary skill in the art would have been motivated to do so because “At the beam waist location, the beam diameter is small enough to once again generate sufficient intensity for nonlinear absorption and subsequent laser modification to occur in the bulk of the material” as taught in column 11, lines 60-65 in Arai.
Regarding claim 8,
The method as claimed in claim 1, further comprising shifting the laser beam and the transparent material relative to one another using a feed. (Mikolaschek is silent about this.
Arai teaches “an automated X-Y axis stage assembly (9) is generally required for moving the work pieces (7) laterally relative to the focused laser beam. Alternatively, the laser beam (2) could be moved relative to a stationary target material with the use of scanning mirrors (3), (4), and (5)” in column 11, lines 6-12.)
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to shift the beam and workpiece relative to one another as taught in Arai to the hardening method in Mikolaschek. One of ordinary skill in the art would have been motivated to do so because “The transformed beam is directed toward the target transparent material (7) to cause ablation/modification of the material (7) at multiple determined locations, within and/or on the surface, of the material (7)” as taught in column 11, lines 25-30 in Arai.
Regarding claim 9,
The method as claimed in claim 1, wherein the laser beam sweeps multiple times over at least one position of the transparent material. (Mikolaschek is silent about this.
Arai teaches “Features may be formed with single scans, multiple scans, or any combination” in column 16, lines 35-36.)
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to apply multiple scans as taught in Arai to the hardening method in Mikolaschek. One of ordinary skill in the art would have been motivated to do so to “incrementally heat the materials until melting and welding occurs” as taught in column 4, lines 10-15 in Arai.
Regarding claim 10,
The method as claimed in claim 1, further comprising splitting the laser beam into a plurality of laser beams, before the introducing of the material modification. (Mikolaschek is silent about this.
Arai teaches “A single input laser beam is first split into two beams using a polarizing beam splitter” in column 14, lines 20-22.)
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to split the laser beam into a plurality of beams as taught in Arai to the hardening method in Mikolaschek. One of ordinary skill in the art would have been motivated to do so because “In some embodiments two depth wise spaced focused beams are produced, and at least one beam focused within the material. The second beam may be focused at or near a surface of the material, within the material, or at any depth wise location suitable for material modification” in column 14, lines 15-20 in Arai.
Regarding claim 11,
The method as claimed in claim 1, wherein the material is prestressed by being chemically or thermally hardened prior to introducing the material modification. (Mikolaschek teaches in page 6, paragraph 10 “the glass before, during or after the actual curing process, for example, be heated to about 200 ° C to compensate for unwanted material stresses.”)
Claim(s) 3, 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mikolaschek, and Arai as applied to claim 1 above, and further in view of Hosseini, US 20200324368 (hereafter Hosseini).
Regarding claim 3,
The method as claimed in claim 1, further comprising focusing the laser beam using an optical unit so as to dispose a focus region outside of the transparent material (Primary combination of references is silent about this.
Hosseini teaches “FIG. 1(c) employs distributed focusing element 150 to focus incident beam 160 such that the resulting converging beam 165 is focused to an initial external waist 175” in paragraph [89].)
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Fig. 1c of Hosseini
at a distance of less than 100 times a characteristic length from the surface of the transparent material. (Paragraph [89] further teaches “the waist is located at an offset of at least approximately 10 μm from an external surface of the material.” Paragraph [77] teaches a quasi-Rayleigh length of 10mm. Thus the offset is less than 100 times the characteristic length. MPEP 2144.05-I sets forth “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.)” )
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to focus the beam outside the transparent material as taught in Hosseini to the hardening method in Mikolaschek. One of ordinary skill in the art would have been motivated to do so because “The external formation of the initial waist prevents excessive focusing and optical breakdown within the material, avoiding deleterious effects such as optical breakdown” as taught in paragraph [89] in Hosseini.
Regarding claim 5,
The method as claimed in claim 3, wherein the distance of the focus region relative to the surface of the transparent material is automatically kept constant. (Mikolaschek is silent about this. The claim is interpreted as the focus position is controlled by a controller.
Arai teaches “a Z-axis stage (8) is used for beam focus position control (depth)” in column 11, lines 5-10. It is implied that the Z-axis stage controller maintains the distance automatically.)
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to control the focus position as taught in Arai to the hardening method in Mikolaschek. One of ordinary skill in the art would have been motivated to do so because “Particular regions of the transformed laser beam have sufficient intensity to cause ablation and/or modification of the target material via nonlinear absorption processes” as taught in column 11, lines 14-20 in Arai.
Claim(s) 7, 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mikolaschek, and Arai as applied to claim 1 above, and further in view of Soren, WO 2019134807 (hereafter Soren).
Regarding claim 7,
The method as claimed in claim 1, wherein a pulse overlap of the ultrashort laser pulses is greater than 1. (Primary combination of references is silent about this.
Soren teaches in page 4, paragraph 6 “a point is approached and the material there with a well-defined energy (pulse energy * number of pulses) irradiated, so that forms a bulge.”)
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to design overlapping pulses as taught in Soren to the hardening method in Mikolaschek. One of ordinary skill in the art would have been motivated to do so because “identical surface structures are produced at different locations, each with the same, predefined pulse parameters” as taught in page 4, paragraph 6 in Soren.
Regarding claim 17,
The method as claimed in claim 1, wherein a distance between the ultrashort laser pulses is shorter than a thermal diffusion time of the transparent material. (Primary combination of references is silent about this.
Soren teaches in page 2, paragraph 6 of the attached machine translation “If the temporal pulse interval is shorter than the typical heat diffusion time of the glass, the temperature in the focus area increases from pulse to pulse (so-called heat accumulation) and can lead to local melting.”)
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to control the distance between pulses to be shorter than a thermal diffusion time of the glass as taught in Soren to the hardening method in Mikolaschek. One of ordinary skill in the art would have been motivated to do so because “If the temporal pulse interval is shorter than the typical heat diffusion time of the glass, the temperature in the focus area increases from pulse to pulse (so-called heat accumulation) and can lead to local melting” as taught in page 2, paragraph 6 in Soren.
Regarding claim 18,
The method as claimed in claim 1, wherein a plurality of ultrashort laser pulses are emitted in a first pulse train, wherein a temporal distance of the pulse trains is greater than 100 ns. (Primary combination of references is silent about this.
Soren teaches a burst repetition rate of 200 kHz on page 6, last line corresponding to a temporal distance of 5 µs. Here temporal distance of 5µs is greater than 100 ns. MPEP 2144.05-I sets forth “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.)” )
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to control the distance between bursts of pulses to be greater than 100 ns as taught in Soren to the hardening method in Mikolaschek. One of ordinary skill in the art would have been motivated to do so “to allow heat accumulation in the workpiece” as taught in page 6, paragraph 2 in Soren.
Regarding claim 19,
The method as claimed in claim 1, wherein: a distance between the ultrashort laser pulses is shorter than a thermal diffusion time of the transparent material, (Similar scope to claim 17 and therefore rejected under the same argument.)
a pulse overlap of the ultrashort laser pulses is greater than 1, (Similar scope to claim 7 and therefore rejected under the same argument.)
and a plurality of ultrashort laser pulses are emitted in a first pulse train, wherein a temporal distance of the pulse trains is greater than 100 ns. (Similar scope to claim 18 and therefore rejected under the same argument.)
Response to Arguments
Applicant’s arguments filed on 04/09/2026 with respect to claim(s) 1-19 have been considered but are not persuasive.
The applicant argued on page 6 against 112b rejection of “Gauss-type beam” in claim 6. The applicant argued that Gauss-type beam is known in the art and refers to practical limitations of producing an ideal beam. According to this argument different optical systems may produce beams that are like gaussian but has different characteristics due to practical limitations of the individual optical systems. Even if the term “gauss-type” is known in the art that does not provide enough structure to overcome indefiniteness. Additionally, Fig. 1a of the original disclosure describes laser pulses 66 that are triangle shaped. It is not clear if claim 6 refers to these triangle pulses as gauss-type beams.
The applicant amended claim 1 and argued that this makes the claimed invention distinguishable from prior art.
In response to applicant's arguments on pages 7-9 against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Mikolaschek teaches a method of local hardening of glass by applying pulsed laser. Arai teaches processing of transparent materials with ultrashort laser pulses with example applications in scribing, marking, welding, and joining. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teachings of Arai in the hardening method of Mikolaschek.
In response to applicant's argument on pages 8-9 that Arai does not teach using laser pulses to improve surface hardness, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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.
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/FAHMIDA FERDOUSI/ Examiner, Art Unit 3761
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