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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/18/2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 “movable part” of claim 6 and the “fixed part” of claim 6 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 200 f, 200 m, 205, 202, 202 a, 202 b, 202 c, 201 204, 203, 42 as described in applicant’s specification in [0132-0139]. 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. 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.
In claim 1, the claim limitation “a mounting means” that use the word “means” is 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. In para "[0068]", the specification states: the mounting device comprises a suction pad. Therefore, the mounting means is construed as a suction pad.
In claim 1, the claim limitation “a orientation means” that use the word “means” is 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. In para "[0107]", the specification states: the orientation means comprises at least a rotatable mirror or a mirrors using a galvanometer based motor a galvo head. Therefore, the orientation means is construed as a mirror and a motor.
In claim 1, the claim limitation “a closing means” that use the word “means” is 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. In para "[0113, 0115]", the specification states: the closing means 14 can comprise a fixing means and a mask… the fixing means can comprise a slide. Therefore, the closing means is construed as a mask and a slide.
In claim 5, the claim limitation “a fixing means” that use the word “means” is 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. In para "[0115]", the specification states: the fixing means can comprise a slide. Therefore, the fixing means is construed as a slide.
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 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 the limitation “the decoating apparatus." There is insufficient antecedent basis for this limitation in the claim. Claim 6 depends on claim 1, which does not claim “a decoating apparatus,” rather it claims a “laser apparatus.” For purposes of examination, “the decoating apparatus” is taken to be “the laser apparatus.”
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 18252481 in view of Otaki (US20140009729A1).
Regarding claim 1, Application No. 18252481 teaches a laser apparatus, inscribed in a parallelepiped rectangle R defined by a longitudinal axis, X, a vertical axis, Y defining a plane P and a lateral axis, Z (Claim 1 lines 1-3 A laser apparatus inscribed in a parallelepiped rectangle R defined by a longitudinal axis, X, a vertical axis, Y defining a plane P and a lateral axis, Z, comprising), comprising:
a mounting means to mount the laser apparatus on a window, mounted in situ (Claim 1 lines 4-5 a mounting means to mount the laser apparatus on a window, mounted in situ);
a laser device generating a laser beam to treat a surface of the window (Claim 1 lines 6- 7 a laser device generating a laser beam to treat a surface of the window);
an orientation means able to orientate the laser beam defining a maximum decoatable surface on the surface to be treated (Claim 1 lines 8-10 an orientation means able to orientate the laser beam defining a maximum decoatable surface (WSm) on the surface to be treated);
Application No. 18252481 does not teach wherein the laser apparatus comprises a closing means to at least partially reduce a maximum decoatable surface to a working surface.
Otaki teaches wherein the laser apparatus comprises a closing means (3, 5) to at least partially reduce a maximum decoatable surface to a working surface ([0038] the longitudinal length of the laser light L radiated on the object Ob to be irradiated is adjusted).
It would have been obvious to have modified Application No. 18252481 with the teachings of Otaki to have to have a closing means to reduce a maximum decoatable surface to a working surface so the laser may be seperated through a closing means such that only certain portions of the light are let through which improves the efficiency of laser processing (Otaki [0034-0035]).
Regarding claim 2, Application No. 18252481 and Otaki teach the laser apparatus according to claim 1, and Application No. 18252481 teaches wherein the laser apparatus is a decoating apparatus and wherein the laser device is designed to decoat at least partially a portion of a coating system present on a surface of the window (Claim 2 wherein the laser apparatus is a decoating apparatus and wherein the laser device is designed to decoat at least partially a portion of a coating system present on a surface of the window).
This is a provisional nonstatutory double patenting rejection.
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 1-4, 6-7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Estino (US8927069B1) in view of Otaki (US20140009729A1).
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Fig. 5 of Estino
Regarding claim 1, Estino teaches a laser apparatus (410) ,
inscribed in a parallelepiped rectangle R (570) defined by a longitudinal axis, X, a vertical axis, Y defining a plane P and a lateral axis, Z (Fig. 5), comprising:
a mounting means (Col. 3 lines 1-30 mounts 507 a-507 d) to mount the laser apparatus (410) on a window (110, 105), mounted in situ;
a laser device (410) generating a laser beam (450) to treat a surface of the window (110, 105);
an orientation means (Col. 7 lines 60-67 the laser beam may be directed at the necessary locations on the low-E coating by a system of one or more mirrors) able to orientate the laser beam (450) defining a maximum decoatable surface (120) on the surface to be treated (110);
Estino does not teach wherein the laser apparatus comprises a closing means to at least partially reduce a maximum decoatable surface to a working surface.
Otaki teaches wherein the laser apparatus comprises a closing means (3, 5) to at least partially reduce a maximum decoatable surface to a working surface ([0038] the longitudinal length of the laser light L radiated on the object Ob to be irradiated is adjusted).
Estino and Otaki are considered to be analogous to the claimed invention because they are in the same field of laser apparatuses. It would have been obvious to have modified Estino with the teachings of Otaki to have a closing means to reduce a maximum decoatable surface to a working surface so the laser may be seperated through a closing means such that only certain portions of the light are let through which improves the efficiency of laser processing (Otaki [0034-0035]).
Regarding claim 2, Estino and Otaki teach the laser apparatus according to claim 1, and Estino teaches wherein the laser apparatus is a decoating apparatus (Col. 3 lines 1-30 a pulsed laser to remove (i.e., ablate) the low-E coating) and wherein the laser device is designed to decoat at least partially a portion of a coating system (120) present on a surface of the window (110).
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Fig. 1 of Otaki
Regarding claim 3, Estino and Otaki teach the laser apparatus according to claim 1, but Estino is silent on wherein the closing means comprises a fixing means and a mask able to be fixed to the fixing means in front of the laser beam.
Otaki teaches wherein the closing means (3, 5) comprises a fixing means (3) and a mask (5) able to be fixed to the fixing means (5) in front of the laser beam (L, Fig. 1).
It would have been obvious to have modified Estino to incorporate the teachings of Otaki to have a closing means with a fixing means so that the laser may be separated through a closing means such that only certain portions of the light are let through which improves the efficiency of laser processing (Otaki [0034-0035]).
Regarding claim 4, Estino and Otaki teach the laser apparatus according to claim 3, but Estino is silent on wherein the mask comprises at least a mask window and a mask frame and wherein the mask frame is opaque to the laser beam.
Otaki teaches wherein the mask (5) comprises at least a mask window (slits 2A, 2B) and a mask frame ([0034] portions of mask 5 that are not slits 2A, 2B) and wherein the mask frame is opaque to the laser beam ([0034] a light-blocking film coated on a transparent substrate to form a mask 5).
It would have been obvious to have modified Estino to incorporate the teachings of Otaki to have a mask have a frame and a window the laser may be separated through a closing means such that only certain portions of the light are let through which improves the efficiency of laser processing (Otaki [0034-0035]).
Regarding claim 6, Estino and Otaki teach the laser apparatus according to claim 1, and Estino teaches where wherein the laser device (410) comprises a movable part (Col. 7 lines 60-67 mirrors) and a fixed part (440), irremovable in the decoating apparatus (410) in directions paralleled to the plane P and along the lateral axis Z (Col. 6 lines 1-10 lens array 440 are mounted, and taken to be irremovable).
Regarding claim 7, Estino and Otaki teach the laser apparatus according to claim 6, and Estino teaches wherein the movable part (Col. 7 lines 60-67 mirrors) is irremovable along the longitudinal axis X and along the vertical axis Y (Col. 7 lines 60-67 the laser beam may be directed at the necessary locations on the low-E coating by a system of one or more mirrors; where the mirrors are understood to be movable but not removable).
Regarding claim 12, Estino and Otaki teach the laser apparatus according to claim 1, and Estino teaches wherein the mounting means (Col. 3 lines 1-30 mounts 507 a-507 d) to mount the laser apparatus is on a multi glazed window mounted in situ (Col. 7 lines 25-45 double pane window 110, 120, 405).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Estino (US8927069B1) in view of Otaki (US20140009729A1) as applied to claim 1 above, and further in view of Matsuda (WO2012046478) with citations made to attached machine translation.
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Fig. 24 of Matsuda
Regarding claim 5, Estino and Otaki teach the laser apparatus according to claim 3, but are silent on wherein the fixing means comprises a slide able to slide the mask in front of the laser beam.
Matsuda teaches wherein the fixing means (Pg. 45 line 18 - Pg. 46 line 9 a mask transport mechanism 50 for moving the mask 44 left and right) comprises a slide (50) able to slide the mask (44) in front of the laser beam (Pg. 47 line 20- Pg. 48 line 10 the mask pattern is changed by using the mask transport mechanism shown in Fig. 24. To slide the mask 44 so that the opening Μ 1-M4 arranged on the imaginary line L1 is retracted to the laser light).
Estino, Otaki, and Matsuda are considered to be analogous to the claimed invention because they are in the same field of laser apparatuses. It would have been obvious to have modified Estino and Otaki to incorporate the teachings of Matsuda to use a fixing means to slide a mask in front of the laser beams in order to create various desired patterns in various areas of the laser light (Matsuda Pg. 46 lines 1-10).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Estino (US8927069B1) in view of Otaki (US20140009729A1) as applied to claim 1 above, and further in view of Tanaka (US20070138151A1).
Regarding claim 8, Estino and Otaki teach a laser apparatus according to claim 1, and Estino teaches a method of treating a surface of a window (110, 405) mounted in situ
wherein the method comprises:
A. Choosing a working surface (303, 323, 333, 343) of the surface (120) to be treated;
C. Treating the working surface (Col. 3 lines 25-40 performed using a pulsed laser to remove (i.e., ablate) the low-E coating).
Estino is silent on B. Selecting a closing means corresponding to the working surface.
Tanaka teaches B. Selecting a closing means ([0059-0060] slits 105, 109 and lens 106) corresponding to the working surface ([0059-0060] slits 105 or 109 chosen to adjust the length of the beam spot, direct laser to predetermined positions on substrate 107).
Estino, Otaki, and Tanaka are considered to be analogous to the claimed invention because they are in the same field of laser apparatuses. It would have been obvious to have modified Estino and Otaki to incorporate the teachings of Tanaka to select the closing means corresponding to the surface so that the beams can be applied to the surfaces with a desired pattern for creating a desired product without damaging other portions of the substrate that do not need to be treated (Tanaka [0060]).
Regarding claim 9, Estino and Otaki teach a decoating apparatus according to claim 2, and Estino teaches A method of at least partially decoating a coating system (120) of a multi-glazed window (110, 405) mounted in situ with a decoating apparatus (410) mounted on the multi-glazed window (Fig. 5);
wherein the method comprises:
A. Choosing a working surface (303, 323, 333, 343) of the coating system (120) to be decoated (Col.4 lines 30-55 choosing ablated paths 303, 323, 333, 343 on the coating, taken to be a working surface);
C. Decoating at least partially the working surface (Col. 3 lines 25-40 performed using a pulsed laser to remove (i.e., ablate) the low-E coating).
Estino is silent on B. Selecting a closing means corresponding to the working surface.
Tanaka teaches B. Selecting a closing means ([0059-0060] slits 105, 109 and lens 106) corresponding to the working surface ([0059-0060] slits 105 or 109 chosen to adjust the length of the beam spot, direct laser to predetermined positions on substrate 107).
It would have been obvious to have modified Estino and Otaki to incorporate the teachings of Tanaka to select the closing means corresponding to the surface so that the beams can be applied to the surfaces with a desired pattern for creating a desired product without damaging other portions of the substrate that do not need to be treated (Tanaka [0060]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Estino (US8927069B1) in view of Otaki (US20140009729A1) and Tanaka (US20070138151A1) as applied to claim 9 above, and further in view of Matsuda (WO2012046478) with citations made to attached machine translation.
Regarding claim 10, Estino, Otaki, and Tanaka teach a method according to claim 9, but Estino and Otaki are silent on wherein B further comprises:
B1. selecting a mask corresponding to the working surface; and
B2. of fixing the mask to a fixing means.
Tanaka teaches B1. selecting a mask (slits 105, 109) corresponding to the working surface ([0059-0060] slits 105 or 109 chosen to adjust the length of the beam spot, direct laser to predetermined positions on substrate 107).
It would have been obvious to have modified Estino and Otaki to incorporate the teachings of Tanaka to select the mask corresponding to the surface so that the beams can be applied to the surfaces with a desired pattern for creating a desired product without damaging other portions of the substrate that do not need to be treated (Tanaka [0060]).
Estino, Otaki, and Tanaka are silent on B2. of fixing the mask to a fixing means.
Matsuda teaches B2. of fixing the mask (44) to a fixing means (Pg. 45 line 18 - Pg. 46 line 9 a mask transport mechanism 50 for moving the mask 44 left and right).
It would have been obvious to have modified Estino, Otaki, and Tanaka to incorporate the teachings of Matsuda to use a fixing means to slide a mask in front of the laser beams in order to create various desired patterns in various areas of the laser light (Matsuda Pg. 46 lines 1-10).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABIGAIL RHUE whose telephone number is (571)272-4615. The examiner can normally be reached Monday - Friday, 10-6.
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/ABIGAIL H RHUE/Examiner, Art Unit 3761 2/12/2026
/VY T NGUYEN/Examiner, Art Unit 3761