The arguments and amendments submitted 04/20/2026 have been considered. In light of amendments made, the USC § 112(a) rejections in the previous office action are hereby withdrawn. The merits of the claims are discussed below.
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.
Claims 1-13 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 pre-AIA the applicant regards as the invention.
Claim 1, lines 6-7 recite "the irradiation unit generates a plurality of converging points arranged on a straight line at a predetermined pitch per one pulse of the pulsed laser". It is unclear whether the recited generation occurs for only one pulse of the laser or must occur for each pulse of the laser. For the purpose of examination, claim 1, lines 6-7 read on "the irradiation unit generates, for each pulse of the pulsed laser, a plurality of converging points arranged on a straight line at a predetermined pitch". Dependent claims fall herewith.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morita (US PG Pub 2006/0289410).
Regarding claim 1, Morita teaches a substrate manufacturing apparatus (abstract, Figs. 19-21), comprising:
a stage (103) on which a semiconductor substrate (102) is disposed;
an irradiation unit (104) that irradiates the semiconductor substrate disposed on the stage (as shown in Figs. 19-21) with a pulsed laser of a predetermined pulse period (para. 0157); and
a controller (comprising 113, 110) that controls a relative position between the stage and the irradiation unit (para. 0159),
wherein the irradiation unit generates, for each pulse of the pulsed laser (each shot shown in Fig. 22 corresponds to each pulse of the laser), a plurality of converging points arranged on a straight line at a predetermined pitch (as shown in Figs. 20-21),
the controller moves the relative position between the stage and the irradiation unit at a predetermined speed (via the stage and stage controller per paras. 0159, 0168-0169) in parallel to the straight line on which the plurality of converging points are arranged (as shown in Figs. 21-22).
Morita does not explicitly teach that the predetermined speed is a speed at which a moving distance of the plurality of converging points in one period of the predetermined pulse period is the same as the predetermined pitch such that a subsequent converging point among the plurality of converging points irradiates a same irradiation point previously irradiated by a preceding converging point among the plurality of converging points. However, this recitation is not a structural feature of the apparatus and instead is merely a manner of operating the claimed apparatus. The courts have held that the manner of operating the device does not limit the claimed apparatus or differentiate apparatus claims from the prior art, and therefore cannot provide a basis for patentabilty. "[A]pparatus claims cover what a device is, not what a device does." See MPEP §2114.II and Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). Furthermore, it is noted that Morita’s apparatus clearly has the capability of being operated in the manner recited.
Regarding claim 2, Morita teaches the irradiation unit includes a plurality of laser light sources, and the plurality of converging points are generated by the plurality of laser light source (as shown in Fig. 19).
Regarding claims 3-11, each of the features recited in these claims merely recite a manner of operating the device. Furthermore, none of these claims recites additional structure/components beyond what is recited in parent claim 1. As noted above, the courts have held that the manner of operating the device does not differentiate apparatus claims from the prior art. "[A]pparatus claims cover what a device is, not what a device does." See MPEP §2114.II and Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). It is noted that Morita’s apparatus clearly has the capability of being operated in the manner recited in each of these claims.
Allowable Subject Matter
In view of the present amendments and in accordance with the indication of allowable subject matter in the office action mailed 06/18/2025, claims 12-13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and all intervening claims.
Response to Arguments
Applicant's arguments filed 04/20/2026 have been fully considered but are moot and/or not persuasive in view of the rejection of claim 1 above and for the reasons given below.
Regarding claim 1, the present amendments to claim 1 distinguish over Okuma’s teachings and this reference has been withdrawn from the rejection of claim 1.
Regarding claim 1, Applicant presents an argument contending that the primary reference, Morita, teaches away from the presently amended recitation defining the predetermined speed. However, this feature does not limit claim 1 for the reasons given in the rejection above. Examiner notes that if claim 1 were amended to recite - - the controller is configured to move the relative position between the stage and the irradiation unit at a predetermined speed in parallel to the straight line on which the plurality of converging points are arranged;
and the predetermined speed is a speed at which a moving distance of the plurality of converging points in one period of the predetermined pulse period is the same as the predetermined pitch such that a subsequent converging point among the plurality of converging points irradiates a same irradiation point previously irradiated by a preceding converging point among the plurality of converging points - -,
then the configured controller would become a structural feature of the apparatus, and the recitations listed above defining the predetermined speed would thereby become limitations for the claimed apparatus.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIM R SMITH whose telephone number is (303)297-4318. The examiner can normally be reached Mon-Fri. 9-6 MST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JRS/
Examiner
Art Unit 1745
/JIMMY R SMITH JR./Examiner, Art Unit 1745
Prosecution Insights