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 .
Claims Status:
Claims 1-14 is pending.
Claims 1, 3-4, 9-11 and 13 are amended.
Claims 1-14 are examined as follow:
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. In this case, the present title is too long. See MPEP 606.01.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, the term “able” in line 11, should be removed.
Appropriate correction is required.
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.
Claim limitation “mounting device” in claims 1 has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use the word “device" coupled with functional language “configured to mount…” without reciting sufficient structure to achieve the function. Furthermore, the “device” is not preceded with a sufficient structural modifier beside the term “mounting”. A review of the specification shows that, although it is unclear the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112, sixth paragraph limitation: The limitation “mounting device" is the closest to such cited term and has been described in Page 15, line 31 to 33 cited: “…the mounting device comprises a suction pad 111, as the mounting means 11…”, therefore it is a suction pad.
Claim limitation “movable mechanism” in claims 1 has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use the word “mechanism" coupled with functional language “to move…/ is configured to move” without reciting sufficient structure to achieve the function. Furthermore, the “mechanism” is not preceded with a sufficient structural modifier. A review of the specification shows that, there is no such exact term in the specification or further clarify with related corresponding structure, the limitation “movable means" is the closest to such cited term and has been described in Page 4 line 14 cited: “…comprises a movable means able to move the mobile part substantially along the lateral axis Z…” and some kind of structure can move something.
Claim limitation “orientation device” in claims 4 has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use the word “device" coupled with functional language “configured to…” without reciting sufficient structure to achieve the function. Furthermore, the “device” is not preceded with a sufficient structural modifier. review of the specification shows that, there is no such exact term in the specification or further clarify with related corresponding structure, the limitation “orientation means" is the closest to such cited term and has been described in Page 12 line 22-23 cited: “…the decoating apparatus can further comprise an orientation means configured to control the direction of said laser beam, preferably the orientation means comprises at least a rotatable mirror or a mirrors using a galvanometer based motor, a galvo head…”, as a structure that can direct laser beam with mirrors and motor.
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 1-14 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.
In claim 1, the newly amended limitation “movable mechanism” is not described in the specification, there is no disclosure of such team. Such that constitutes new matter.
In claim 4, the newly amended limitation “orientation device” is not described in the specification, there is no disclosure of such team. Such that constitutes new matter.
Claims 2-3 and 5-14 are rejected based on the inherited deficiencies of the corresponding independent claim.
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 1-14 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.
In claim 1, the claim is indefinite because the newly amended term “movable mechanism” invokes 112f, and there is no such term disclosed in the specification, and it is unclear what is “movable mechanism”. Clarification is required. For examination purposes, through the best understanding from the specification and as person skilled in the art, Examiner assumed that such limitation is intended to be a moving mechanical structural that moving a lens to adjust focal point of the laser (refer to Page 10 and 11, the relationship between mobile part #200m and movable means).
In claim 4, the claim is indefinite because the newly amended term “orientation device” invokes 112f, and there is no such term disclosed in the specification, and it is unclear what is “movable mechanism”. Clarification is required. For examination purposes, through the best understanding from the specification and as person skilled in the art, Examiner assumed that such limitation is intended to be the previous cited limitation before amendment “orientation means”(refer to the 112f above for interpretation).
Claims 2-3 and 5-14 are rejected based on the inherited deficiencies of the corresponding independent claim.
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 1-6 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al (US8598489B1 previously cited) herein set forth as Miller, in view of Philippron (US2020/0001393A1 newly cited) herein set forth as Philippron.
Regarding claim 1, Miller discloses a decoating apparatus (laser etching device #110 fig. 2 and 3), inscribed in a parallelepiped rectangle R defined by a longitudinal axis, X, a vertical axis, Y defining a plane P (refer to the surface of glass #146 in fig.3) and a lateral axis, Z (refer Z as the direction of the suction cap 154a and 154b suction direction) (refer to the 3D dimension of the laser etching device in fig.2 ), comprising:
a mounting device (suction cap 154a and 154b fig.2) configured to mount the decoating apparatus (laser etching device #110 fig. 2 and 3) on a window (glass #146 in fig.3), mounted in situ (refer to col 3 line 22 -26 “…causing the vacuum device to apply a high-level vacuum to the plurality of suction cups to firmly engage the piece of glass…”);
a laser device (delivery head #114, fig.2 and 3) to decoat at least partially a portion of a coating system present on a surface of the window (glass #146 in fig.3) (Examiner note: about the limitation “decoat at least partially a portion of a coating system”, laser etching used for laser removing layer of the material to create shape and pattern on the surface of the material, therefore Miller’s laser etching teaches “decoat at least partial a portion of a coating system ); the laser device (delivery head #114, fig.2 and 3) comprising
a fixed part (laser emitter #120 in fig.3) that does not move in the decoating apparatus (laser etching device #110 fig. 2 and 3) in directions paralleled to plane P (refer to the surface of glass #146 in fig.3) and along the lateral axis Z (refer Z as the direction of the suction cap 154a and 154b suction direction), comprising a laser generator (refer to laser emitter #120 in fig.3) to generate a laser beam (laser beam #132 fig.3); and
a movable mechanism (steering mechanism #140, fig.2 and 3) that directing the laser beam (laser beam #132 fig.3), while the fixed part (laser emitter #120 in fig.3) remains fixed along the lateral axis Z (refer Z as the direction of the suction cap 154a and 154b suction direction).
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Miller does not explicitly disclose a movable mechanism to move a mobile part along the lateral axis Z while the fixed part remains fixed along the lateral axis Z, wherein the mobile part comprises a focal lens to produce a focal point of the laser beam at a defined distance Df from the focal lens, and wherein the movable mechanism is configured to move the mobile part to position the focal point on the coating system.
Philippron discloses a movable mechanism (focal distance adjuster #30, fig.1) able to move a mobile part (lens #32, fig.1) along the lateral axis Z (the movement direction of piezo-element #33 in fig.1),
wherein the mobile part (lens #32, fig.1) comprises a focal lens (lens #32, fig.1) to produce a focal point (refer to the term “focal” in “focal distance adjuster #30” in fig.1) of the laser beam (refer to “P” annotated in fig.1) at a defined distance Df (refer to the “Df” and the term “distance” in “focal distance adjuster #30” in fig.1) from the focal lens (lens #32, fig.1), and
wherein the movable mechanism (focal distance adjuster #30, fig.1) is configured to move the mobile part (lens #32, fig.1) to position the focal point (refer to the “Df” and the term “distance” in “focal distance adjuster #30” in fig.1) on the coating system (surface #101, fig.1) .
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miller steering mechanism with a movable mechanism to move a mobile part along the lateral axis Z while the fixed part remains fixed along the lateral axis Z, wherein the mobile part comprises a focal lens to produce a focal point of the laser beam at a defined distance Df from the focal lens, and wherein the movable mechanism is configured to move the mobile part to position the focal point on the coating system, as taught by Philippron, in order to provide a better control laser and more efficient laser focal distance adjustment, such that allowing the laser to adjust laser focal point faster and easy, making the laser treatment or cleaning faster too.
Regarding claim 2, the modification of Miller and Philippron discloses substantially all features set forth in claim 1, Miller further discloses wherein the laser generator (emitter housing #112, laser #120, collimator #126, fold mirror #128 fig.3) generates a collimated laser beam (refer to the collimator #126 in fig.3).
Regarding claim 3, the modification of Miller and Philippron discloses substantially all features set forth in claim 1, Miller does not explicitly disclose wherein the mobile part does not move along the longitudinal axis X and along the vertical axis Y.
Philippron discloses wherein the mobile part (lens #32, fig.1) does not move along the longitudinal axis X and along the vertical axis Y (refer to the fig.1, lens #32 only move on axis Z).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miller steering mechanism with wherein the mobile part does not move along the longitudinal axis X and along the vertical axis Y, as taught by Philippron, in order to provide a better control laser and more efficient laser focal distance adjustment, such that allowing the laser to adjust laser focal point faster and easy, making the laser treatment or cleaning faster too.
Regarding claim 4, the modification of Miller and Philippron discloses substantially all features set forth in claim 1, Miller further discloses wherein the mobile part (refer to “mobile part” annotated in fig.2) further comprises an orientation device (beam steering mechanism #140, fig.2-3) configured to control a direction of said laser beam (refer to Col 6 line 34-40 cited: “…One example of a means for steering the laser beam 132 into the pattern of the indicia are beam steering mirrors (not shown) mounted on galvanometric motors (not shown). Other beam steering technologies, such as piezo-electric and acousto-optical, provide equivalent beam steering functionality and are within the spirit and scope of the invention described herein …”).
Regarding claim 13, the modification of Miller and Philippron discloses substantially all features set forth in claim 1, Miller further discloses wherein the mobile part (refer to “mobile part” annotated in fig.2) further comprises a galvo head (beam steering mechanism #140, fig.2-3) as the orientation device (beam steering mechanism #140, fig.2-3) configured to control a direction of the laser beam (refer to Col 6 line 34-40 cited: “…One example of a means for steering the laser beam 132 into the pattern of the indicia are beam steering mirrors (not shown) mounted on galvanometric motors (not shown). Other beam steering technologies, such as piezo-electric and acousto-optical, provide equivalent beam steering functionality and are within the spirit and scope of the invention described herein …”).
Regarding claim 5, the modification of Miller and Philippron discloses substantially all features set forth in claim 13, Miller further discloses wherein the mobile part (refer to “mobile part” annotated in fig.2) comprises a first deflecting mirror (fold glass #128, fig.3) to deflect the laser beam (laser beam #132 fig.3) substantially in a perpendicular direction (refer to the angle the laser #132 entering input aperture #134 in fig.3) to the galvo head (beam steering mechanism #140, fig.2-3).
Regarding claim 6, the modification of Miller and Philippron discloses substantially all features set forth in claim 5, Miller further discloses wherein the laser device (delivery head #114, fig.2 and 3) comprises a second deflecting mirror (refer to the deflecting mirror in the beam steering mechanism #140 in fig. 2-3) to deflect the laser beam (laser beam #132 fig.3) substantially in the perpendicular direction (refer to the angle of the laser beam #132 from beam steering mechanism #140 to #148 in fig.3).
Regarding claim 10, the modification of Miller and Philippron discloses substantially all features set forth in claim 1, Miller further discloses a measurement display (refer to “measurement display” annotated in fig.3) able to display a movement (refer to “movement” annotated in fig.3) induced by the movable mechanism (beam steering mechanism #140, fig.2-3) of the focal lens (focusing lens #142, fig.3).
Regarding claim 11, the modification of Miller and Philippron discloses substantially all features set forth in claim 1, Miller further discloses a method to decoat at least partially a portion of a coating system present on a surface of a window, mounted in situ by a decoating apparatus according to claim 1 (refer to claim 1 rejection above); the method comprises following steps:
mounting the decoating apparatus (laser etching device #110 fig. 2 and 3) in front of the portion (referring to the portion of the glass #146 covered by the laser etching #110 in fig.3) to be decoated (referring fig.2-3);
at least partially decoating the portion (referring to the portion of the glass #146 covered by the laser etching #110 in fig.3) to be decoated with the laser beam (laser beam #132 fig.3); and
unmounting the decoating apparatus (laser etching device #110 fig. 2 and 3).
Regarding claim 12, the modification of Miller and Philippron discloses substantially all features set forth in claim 1, Miller does not disclose the window is a multi-glazed window.
However, the window is multi-glazed window is an intended use of the decoating apparatus, and it does not modify any structural limitation or physical limitation of the claimed decoating apparatus.
Therefore, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miller’s window with a multi-glazed window, for that is well known within one of ordinary skill in the art as the matter of design choice or desired application, refer to In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). Since the applicant does not state what problem solve or benefit of such limitation, one of ordinary skill in the art would have expected applicant’s invention to perform equally well with Millrer’s teaching, such that would increase the field of usage of the invention and also the market of the invention.
Regarding claim 14, the modification of Miller and Philippron discloses substantially all features set forth in claim 1, Miller does not disclose the window is a multi-glazed window.
However, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have try to use Miller’s decoating apparatus, since Miller is decoating a window, such that would make sense would also use Miller’s decoating apparatus on a glazed window too, furthermore, a glazed window is also a window, such that would be also observe too.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al (US8598489B1 previously cited) herein set forth as Miller, in view of Philippron (US2020/0001393A1 newly cited) herein set forth as Philippron, and further in view of EP1340585 (previously cited) herein set forth as EP0585.
Regarding claim 7, the modification of Miller and Philippron discloses substantially all features set forth in claim 6, Miller does not disclose wherein the second deflecting mirror is comprised in the fixed part.
EP0585 discloses wherein the second deflecting mirror (refer to the term “a turning mirror” in col 16 line 51-53 cited: “…The first laser conduit section 202 comprises a rigid bend 203 provided internally with a turning mirror for reflecting the laser beam around the bend …”) is comprised in the fixed part (refer to “fixed part” annotated in fig.2).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miller’s decoating apparatus with the second deflecting mirror is comprised in the fixed part, as taught by EP0585, in order to provide the capability to extend the distance of the laser head with larger or stronger laser generator, such that would provide flexibility to expand the invention to cover different needed of the market.
Regarding claim 8, the modification of Miller, Philippron and EP0585 discloses substantially all feature set forth in claim 7, Miller does not disclose wherein the laser device comprises a third deflecting mirror to deflect the laser beam substantially in the perpendicular direction.
EP0585 further discloses wherein the laser device (refer to fig. 3, marking head #211) comprises a third deflecting mirror (mirror #306, fig.2) to deflect the laser beam (laser beam #304, fig.2) substantially in the perpendicular direction (refer to the direction of path #309 in fig.2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miller’s decoating apparatus with wherein the laser device comprises a third deflecting mirror to deflect the laser beam substantially in the perpendicular direction, as taught by EP0585, in order to provide the capability to extend the distance of the laser head with larger or stronger laser generator, such that would provide flexibility to expand the invention to cover different needed of the market.
Regarding claim 9, the modification of Miller, Philippron and EP0585 discloses substantially all features set forth in claim 7, Miller does not disclose wherein the second deflecting mirror and the third deflecting mirrors are comprised in the fixed part.
EP0585 further discloses wherein the second deflecting mirror (refer to the “turning mirror” in rigid bend #203, fig.2, refer to Col 16 line: 51-53 cited: “…The first laser conduit section 202 comprises a rigid bend 203 provided internally with a turning mirror for reflecting the laser beam around the bend …”) and the third deflecting mirrors (refer to the “turning mirror” in rigid bend #205, fig.2, refer to Col 17 line: 8-10 cited: “…The second laser conduit section 204 is of length between the centre points of the turning mirrors in the flexible joints 205 and 207 …”) are comprised in the fixed part (refer to “fixed part” annotated in fig.2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miller’s decoating apparatus with wherein the second deflecting mirror and the third deflecting mirrors are comprised in the fixed part, as taught by EP0585, in order to provide the capability to extend the distance of the laser head with larger or stronger laser generator, such that would provide flexibility to expand the invention to cover different needed of the market.
Response to Amendment
With respect to the Claim Objection: the applicant’s amendment/argument filed on July 30th 2026 that overcame the Claim Objection in the previous office action. However, the newly amended claims raised new objection.
With respect to the Notification of 112f: the applicant’s amendment/argument filed on July 30th 2026 that overcame the Notification of 112f in the previous office action. However some of the newly amended limitations cited in claim 1 that still involved 112f.
With respect to the Rejection 112b: the applicant’s amendment/argument filed on July 30th 2026 that overcame the Rejection 112b in the previous office action. However, the newly amended claim has raised another issue of 112b Rejection.
the applicant’s amendment filed on July 30th 2026 has raised new issue of specification, 112a and 112b issues.
Response to Arguments
Applicant's arguments filed July 30th 2026 have been fully considered but moot in view of the new grounds of rejection with the newly cited secondary Prior art Philippron (US2020/0001393A1).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YEONG JUEN THONG whose telephone number is (571)272-6930. The examiner can normally be reached Monday - Friday.
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/YEONG JUEN THONG/Examiner, Art Unit 3761 August 25th 2026
/PHUONG T NGUYEN/Primary Examiner, Art Unit 3761
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