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 .
DETAILED ACTION
Response to Arguments
Applicant’s arguments filed 04/06/2026 have been fully considered but they are not persuasive.
The applicant argues (see page 7) regarding the amended claim 1 that the combination of Hughes / Yoshii would “result in deterioration of detection accuracy of the detective element.” This is not persuasive. The examiner merely relies on Yoshii for the teaching of a counter substrate including a color filter, a light source arranged behind the counter substrate, and a transparent electrode (see Office Action, page 4). Therefore, the device would function properly as the examiner stated. The claim language therefore does not patentably distinguish over the applied reference[s], and the previous rejections are maintained.
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 1-4, 6, 8, 10-11 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. The specific limitation “the pulsed laser source has a gate that is controlled to stop output of the pulsed laser source based on a detected rotational position of the prism” as presented in claim 1 is not supported by the originally filed specification. The originally filed specification only specifies that the laser source may have a gate that can be controlled to stop the output of the laser (see at least paragraph 0016) and the light output could be gated with control of the prism and the stage to prevent overlapping areas on the beam path being ablated twice (see at least paragraph 0030). The examiner is not sure how the pulsed laser source has a gate that is controlled to stop output of the pulsed laser source based on a detected rotational position of the prism. Appropriate correction is required.
Being dependent on claim 1, claims 2-4, 6, 8, 10-11 are also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph.
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 1-4, 6, 8, 10-11 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. The specific limitation “the pulsed laser source has a gate that is controlled to stop output of the pulsed laser source based on a detected rotational position of the prism” as presented in claim 1 appears to be unclear. The examiner is not sure what is detecting rotational position. Appropriate correction is required.
Being dependent on claim 1, claims 2-4, 6, 8, 10-11 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
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 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.
Claims 1-4, 6, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Diwinsky et al. (EP 3 689 526) in view of Schuster et al. (US 2004/0070754).
Regarding claim 1, Diwinsky et al. (figures 1-3) discloses a laser ablation tool comprising,
a pulsed laser source (232, figure 2) of laser light in a laser light beam; and
a head that (300) contains:
a prism (318, 328, 326) that receives light from the pulsed laser source and rotates by use of a rotation mechanism with the prism located in a plane perpendicular to light received from pulsed laser source; and
a mirror (324, 342) that is moveable in at least one direction and which is set at an angle relative to light received from pulsed laser source; wherein
the head of the laser ablation tool is couplable to an end of a borescope or flexible robot arm (300; figure 3),
the pulsed laser source is external to the head, the head receiving light from the pulsed laser source via an optical fibre (244).
Diwinsky et al. discloses the limitations as shown in the rejection of claim 1 above. However, Diwinsky et al. is silent regarding the pulsed laser source has a gate that is configured to stop output of the pulsed laser source based on a detected rotational position of the prism. Schuster et al. (figures 1-2) teaches the pulsed laser source has a gate that is configured to stop output of the pulsed laser source (see at least paragraph 0073). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the gate as taught by Schuster et al. in order to stop generating light pulses as needed and to protect the workpiece of the ablation tools. Therefore, Diwinsky et al. as modified by Schuster et al. teaches the pulsed laser source has a gate that is configured to stop output of the pulsed laser source based on a detected rotational position of the prism.
The limitation, “a prism that receives light from the pulsed laser source and rotates by use of a rotation mechanism with the prism located in a plane perpendicular to light received from pulsed laser source; a mirror that is moveable in at least one direction and which is set at an angle relative to light received from pulsed laser source; a gate that is controlled to stop output of the pulsed laser source based on a detected rotational position of the prism” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Diwinsky et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP §2113.
Regarding claim 2, Diwinsky et al. discloses the limitations as shown in the rejection of claim 1 above. However, Diwinsky et al. is silent wherein the mirror is set at 45° relative to the light from the laser source. Diwinsky et al. (figures 1-3) discloses wherein the mirror is set at 45° relative to the light from the laser source. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the mirror as taught by Diwinsky et al. in order to obtain a tool that is capable of performing laser ablation on a workpiece at a location with restricted access.
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.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 3, Diwinsky et al. (figures 1-3) discloses wherein the laser light beam is directed to and passes through a lens after the laser light beam has reflected from the mirror (320; the mirror is movable).
The limitation, “wherein after the laser output beam has reflected from the mirror it is directed to and passes through a lens” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Diwinsky et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 4, Diwinsky et al. (figures 1-3) discloses wherein the mirror is able to move in at least one direction as well as move rotationally (at least first position and second position).
The limitation, “wherein the mirror is able to move in at least one direction as well as move rotationally” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Diwinsky et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 6, Diwinsky et al. (figures 1-3) discloses wherein the rotation mechanism is a motor connected to the prism (318, 328, 326).
Regarding claim 10, Diwinsky et al. (figures 1-3) discloses wherein the rotation mechanism is coupled to a gearing system that is also connected to the prism.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Diwinsky et al. in view of Schuster et al. further in view of Zhang (CN 103203552).
Regarding claim 8, Diwinsky et al. discloses the limitations as shown in the rejection of claim 1 above. However, Diwinsky et al. is silent regarding wherein the rotation mechanism is a piezoelectric drive. Zhang (figures 1-2) teaches wherein the rotation mechanism is a piezoelectric drive (see at least paragraph 0079). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the movement mechanism as taught by Zhang in order to obtain a tool that is capable of performing large breadth micro-bore, greatly improving the laser bore efficiency and bore quality and is suitable for drilling straight hole, and filling can dynamically control the shape and size of the scanning laser beam, micro-bore aperture size dynamically variable, and a fine structure for flexible processing capability.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Diwinsky et al. in view of Schuster et al.; further in view of Ramaker et al. (EP 2 216 284).
Regarding claim 11, Diwinsky et al. discloses the limitations as shown in the rejection of claim 1 above. However, Diwinsky et al. is silent regarding wherein the prism and mirror are coupled to encoders so their position is accurately known. Zhang (figures 1-2) teaches wherein the prism and mirror are coupled to encoders so their position is accurately known (see at least page 5, last paragraph). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the movement mechanism as taught by Ramaker et al. in order to convert a mechanical movement into an electric signal.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN NGUYEN whose telephone number is (571)270-1428. The examiner can normally be reached on Monday - Thursday, 8:00 AM -6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Carruth, can be reached at 571-272-9791. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN NGUYEN/Primary Examiner, Art Unit 2871
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