The arguments and amendments submitted 11/07/2025 have been considered. In light of amendments made, all prior USC § 112(b) rejections are hereby withdrawn. The merits of the claims, however, remain unpatentable as set forth below.
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.
Claims 2-17 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Each of claims 6-7 and 9-10 has been amended by the present response to include a recitation of a controller configured to perform various functions, however applicant has not pointed out where any of these controller configurations are described in the specification and these controller configurations are not described anywhere in the disclosure. Although the specification does state that the controller “is operatively coupled to various parts of the transfer device 1 for operating various parts of the transfer device”, this generic statement is not a description that the controller is configured (i.e. programmed or otherwise specially designed) to perform each of the specific functions recited in these claims. Therefore, each of these recitations in these claims is unsupported new matter. Dependent claims fall herewith.
Claim Interpretation
In light of amendments made, the prior USC § 112(f) invocations described in the previous office action are hereby withdrawn.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 2-8 and 11-17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Marinov (US PG Pub 2020/0168498).
Regarding claim 6, Marinov teaches a transfer device (Fig. 7) comprising:
a transfer substrate holder (774) configured to hold a transfer substrate (758) having an ablation layer (dynamic release layer 322 of para. 0049 and Fig. 3) on which at least one element is configured to be held (112 as shown in Fig. 3);
a receiving substrate holder (766) configured to hold a receiving substrate (768’) such that the ablation layer of the transfer substrate is opposite the receiving substrate (as shown in Fig. 7); and
an active energy ray irradiation unit (laser 753) configured to irradiate the ablation layer of the transfer substrate held by the transfer substrate holder with an active energy ray (as shown in Figs. 3 and 7) to cause ablation for transferring the at least one element held by the ablation layer from the transfer substrate to the receiving substrate (paras. 0005 and 0049),
the active energy ray irradiation unit being configured to irradiate the ablation layer with the active energy ray at a plurality of locations in a holding region of the ablation layer that holds one of the at least one element (“The apparatus includes a scanning mechanism configured to scan the multiple beamlets of laser energy to multiple regions of the dynamic release layer, each region of the dynamic release layer adhering a subset of the multiple discrete components to the substrate” per para. 0008 with italics added by examiner);
the holding region of the ablation layer including a plurality of independent holding parts that hold the one of the at least one element (“The apparatus includes a scanning mechanism configured to scan the multiple beamlets of laser energy to multiple regions of the dynamic release layer, each region of the dynamic release layer adhering a subset of the multiple discrete components to the substrate” per para. 0008), and
a controller (762 in Fig. 7 and para. 0068) configured to control the active energy ray irradiation unit to control irradiation location of the active energy ray such that the holding parts are individually irradiated with the active energy ray (“The apparatus includes a controller configured to control the alignment of the laser beam with the location of the one of the discrete components. The controller is configured to control the alignment of the laser beam based on information indicative of one or more of a characteristic and a quality of each of one or more of the discrete components” per para. 0008; see also para. 0068).
Furthermore, the recitation that “the holding region of the ablation layer including a plurality of independent holding parts that hold the one of the at least one element” is merely material(s) worked upon by the claimed apparatus and properties thereof. Therefore, these features do not limit the apparatus being claimed per MPEP § 2115. See also the following: “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Similarly, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)).
Regarding claim 2, Marinov teaches an irradiation range of the active energy ray is smaller than the holding region of the ablation layer (para. 0049 and as shown in Fig. 3).
Regarding claim 3, Marinov teaches the ablation layer disappears under the ablation (“through-thickness ablation of the dynamic release layer” per para. 0049).
Regarding claim 4, Marinov teaches the ablation layer blisters under the ablation (paras. 0005 and 0049).
Regarding claim 5, Marinov teaches the active energy ray irradiation unit is configured such that the locations irradiated with the active energy ray are controlled so that the blistering is formed each time the active energy ray is emitted (paras. 0045 and 0049).
Regarding claim 8, Marinov teaches the active energy ray irradiation unit irradiates the holding parts with the active energy ray in a specific order (paras. 0048 and 0054).
Regarding claim 11, Marinov teaches the active energy ray irradiation unit is configured to convert the active energy ray emitted from an active energy ray source of the active energy ray source into an energy ray bundle formed of a plurality of active energy rays (as shown in Figs. 2B, 2C, 3, and 4), and the energy ray bundle simultaneously irradiates all of the holding parts (as shown in Figs. 2B, 2C, 3, and 4 and per paras. 0045-0046, 0048).
Regarding claim 12, Marinov teaches the active energy ray irradiation unit is configured to irradiate all of the holding parts with an active energy ray of uniform power (implicitly shown for the configurations in Figs. 2B, 2C, 3, and 4; see also para. 0055). Furthermore, this feature is merely a manner of operating the apparatus and thus does not limit the claimed apparatus for the reasons cited above.
Regarding claims 11-13, it is also noted that these claims do not recite any structural elements or implied structural elements beyond the structural elements recited or implied in their respective parent claim(s). Instead, these claims merely recite materials worked upon by the claimed apparatus and properties thereof and/or particular manners of operating the apparatus, none of which limits the apparatus being claimed. Per MPEP § 2115, “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Similarly, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). Furthermore, per MPEP §2114.II, 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." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). Marinov’s apparatus clearly has the capability to be operated in the manners recited in these claims.
Regarding claim 7, Marinov teaches a transfer device (Fig. 7) comprising:
a transfer substrate holder (774) configured to hold a transfer substrate (758) having an ablation layer (dynamic release layer 322 of para. 0049 and Fig. 3) on which at least one element is configured to be held (112 as shown in Fig. 3);
a receiving substrate holder (766) configured to hold a receiving substrate (768’) such that the ablation layer of the transfer substrate is opposite the receiving substrate (as shown in Fig. 7); and
an active energy ray irradiation unit (laser 753) configured to irradiate the ablation layer of the transfer substrate held by the transfer substrate holder with an active energy ray (as shown in Figs. 3 and 7) to cause ablation, under which the ablation layer blisters (para. 0045 and as shown in Fig. 2B), for transferring the at least one element held by the ablation layer from the transfer substrate to the receiving substrate (paras. 0005 and 0049),
the active energy ray irradiation unit being configured to irradiate the ablation layer with the active energy ray at a plurality of locations in a holding region of the ablation layer that holds one of the at least one element (paras. 0047 and 0049 and as shown in Fig. 3);
the holding region of the ablation layer including a plurality of independent holding parts that hold the one of the at least one element (“The apparatus includes a scanning mechanism configured to scan the multiple beamlets of laser energy to multiple regions of the dynamic release layer, each region of the dynamic release layer adhering a subset of the multiple discrete components to the substrate” per para. 0008), and
a controller (762 in Fig. 7 and para. 0068) configured to control the active energy ray irradiation unit to control irradiation location of the active energy ray such that the holding parts are individually irradiated with the active energy ray (“The apparatus includes a controller configured to control the alignment of the laser beam with the location of the one of the discrete components. The controller is configured to control the alignment of the laser beam…of each of one or more of the discrete components” per para. 0008; see also para. 0068).
Furthermore, the recitation that “the holding region of the ablation layer including both holding parts having an element holding force and in which blistering occurs under the irradiation with the active energy ray, and non-holding parts having no element holding force and in which blistering is not produced by the active energy ray” is merely material(s) worked upon by the claimed apparatus and properties thereof. Therefore, these features do not limit the apparatus being claimed per MPEP § 2115. See also the following: “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Similarly, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)).
Regarding claim 14, Marinov teaches the active energy ray irradiation unit irradiates the holding parts with the active energy ray in a specific order (paras. 0048 and 0054).
Regarding claims 15-16, it is noted that these claims do not recite any structural elements or implied structural elements beyond the structural elements recited or implied in their respective parent claim(s). Instead, these claims merely recite materials worked upon by the claimed apparatus and properties thereof and/or particular manners of operating the apparatus, none of which limits the apparatus being claimed. Per MPEP § 2115, “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Similarly, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). Furthermore, per MPEP §2114.II, 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." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). Marinov’s apparatus clearly has the capability to be operated in the manners recited in these claims.
Regarding claim 17, Marinov teaches the active energy ray irradiation unit is configured to convert the active energy ray emitted from an active energy ray source of the active energy ray source into an energy ray bundle formed of a plurality of active energy rays (as shown in Figs. 2B, 2C, 3, and 4), and the energy ray bundle simultaneously irradiates all of the holding parts (as shown in Figs. 2B, 2C, 3, and 4 and per paras. 0045-0046, 0048).
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 of this title, 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 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Marinov in view of Jiang (US PG Pub 2021/0376189).
Regarding claims 9-10, Marinov teaches a transfer device (Fig. 7) comprising:
a transfer substrate holder (774) configured to hold a transfer substrate (758) having an ablation layer (dynamic release layer 322 of para. 0049 and Fig. 3) on which at least one element is configured to be held (112 as shown in Fig. 3);
a receiving substrate holder (766) configured to hold a receiving substrate (768’) such that the ablation layer of the transfer substrate is opposite the receiving substrate (as shown in Fig. 7); and
an active energy ray irradiation unit (laser 753) configured to irradiate the ablation layer of the transfer substrate held by the transfer substrate holder with an active energy ray (as shown in Figs. 3 and 7) to cause ablation for transferring the at least one element held by the ablation layer from the transfer substrate to the receiving substrate (paras. 0005 and 0049),
the active energy ray irradiation unit being configured to irradiate the ablation layer with the active energy ray at a plurality of locations in a holding region of the ablation layer that holds one of the at least one element (“The apparatus includes a scanning mechanism configured to scan the multiple beamlets of laser energy to multiple regions of the dynamic release layer, each region of the dynamic release layer adhering a subset of the multiple discrete components to the substrate” per para. 0008 with italics added by examiner);
the holding region of the ablation layer including a plurality of independent holding parts that hold the one of the at least one element (“The apparatus includes a scanning mechanism configured to scan the multiple beamlets of laser energy to multiple regions of the dynamic release layer, each region of the dynamic release layer adhering a subset of the multiple discrete components to the substrate” per para. 0008), and
a controller (762 in Fig. 7 and para. 0068) configured to control the active energy ray irradiation unit to control irradiation location of the active energy ray (“The apparatus includes a controller configured to control the alignment of the laser beam with the location of the one of the discrete components” per para. 0008; see also para. 0068).
Marinov does not explicitly teach that the controller is configured such that the holding region of the ablation layer is irradiated with the active energy ray in order from an outer location to an inner location, as recited in claim 9, and such that a path of the irradiation with the active energy ray has a spiral shape, as recited in claim 10.
However, Jiang teaches a similar laser transfer device (abstract and Fig. 2) as the one taught by Marinov, comprising a controller configured to control the active energy ray irradiation unit (paras. 0066, 0048-0050, 0053, and 0065) to control irradiation location of the active energy ray (paras. 0048-0050, 0053, and 0065 and as shown in Fig. 4) such that the holding region of the ablation layer is irradiated with the active energy ray in order from an outer location to an inner location (paras. 0053 and 0065 and as shown in Fig. 4), as recited in claim 9, and such that a path of the irradiation with the active energy ray has a spiral shape (paras. 0053 and 0065 and as shown in Fig. 4), as recited in claim 10. Jiang further teaches that configuring the controller to control the irradiation location in this manner provides high precision and improved transfer efficiency for the transfer operations (para. 0065).
Marinov teaches that configuring the controller to control all operations performed by the apparatus is desirable for automation (para. 0068).
Furthermore, the courts have held that automation of known functions and manual activities does not distinguish over the prior art if the automation is nothing more than the predictable use of prior art elements according to their established functions. See the following discussion from MPEP § 2114.IV. When determining whether a computer-implemented functional claim would have been obvious, examiners should note that broadly claiming an automated means to replace a manual function to accomplish the same result does not distinguish over the prior art. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161, 82 USPQ2d 1687, 1691 (Fed. Cir. 2007) ("Accommodating a prior art mechanical device that accomplishes [a desired] goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children’s learning devices. Applying modern electronics to older mechanical devices has been commonplace in recent years."); In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958); see also MPEP § 2144.04.III. Furthermore, implementing a known function on a computer has been deemed obvious to one of ordinary skill in the art if the automation of the known function on a general purpose computer is nothing more than the predictable use of prior art elements according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417, 82 USPQ2d 1385, 1396 (2007).
In view of the teachings of Jiang and Marinov and also the other considerations described above, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Marinov’s apparatus with the controller configuration taught by Jiang to predictably obtain the benefits of automation and/or high precision and improved transfer efficiency for the transfer operations.
Response to Arguments
Applicant's arguments filed 11/07/2025 have been fully considered and are addressed below.
Regarding claims 6 and 7, Applicant presents arguments contending that Marinov does not teach the recited manners of controlling the irradiation and a controller configured to provide these manners of control.
However, these arguments are not persuasive because they fail to consider the totality of Marinov’s teachings and especially the particular teachings cited above in the rejections for claims 6 and 7.
Regarding claims 9 and 10, Applicant presents arguments that Marinov does not teach the recited manner of controlling the irradiation location in the manners recited and a controller configured to provide these manners of control.
However, in response to the present extensive amendments of these claims, new grounds of rejection is made over Marinov in view of Jiang, thus rendering these arguments moot.
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 JIM R SMITH whose telephone number is (303)297-4318. The examiner can normally be reached Mon-Fri. 9-6 MST.
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/JRS/
Examiner
Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745