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
Applicant’s arguments filed on Dec. 26, 2025 have been fully considered.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a scanning device” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth 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 (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.
Claim(s) 1-3, 9 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoffmann et al. (Hoffmann) (2020/0147865) in view of Gates et al. (Gates) (2016/0299426).
Regarding claim 1, Hoffmann discloses a laser lithography device (10, Fig. 1) for producing a three-dimensional structure in a lithographic material (22, para 0039-0041), the laser lithography device comprising: a laser source (12) for emitting a laser writing beam; a lens (18) for focusing the laser writing beam in a focus region (20, para 0043, 0044), wherein the lens has an optical terminating element (36, para 0045); a scanning device (16, para 0039) for displacing the focus region of the laser writing beam relative to the lithographic material (para 0041-0044). However, Hoffmann does not disclose a protection device for preventing contact
between the optical terminating element and the lithographic material, wherein the protection device is arranged directly on the optical terminating element, and the protection device has an adhesive layer for fastening the protection device the optical terminating element. Gates discloses in Fig. 1, a microscope objective (110) for lithography (para 0005) comprising a protection device (130 including oil 137, para 0039, 0040, 0044) for preventing contact between the optical terminating element and the lithographic material (para 0005, 0008, 0040), wherein the protection device is arranged directly on the optical terminating element (110, para 0039, 0040, 0044), and the protection device has an adhesive layer for fastening the protection device the optical terminating element (para 0040, 0045). Therefore, it would have been obvious to one of ordinary skill in the art to provide a protection device of Gates to the invention of Hoffmann in order to prevent damages to the optical element by the lithographic material as taught by Gates.
Regarding claim 2, Hoffmann does not disclose wherein the protection device has a film or a foil. Gates discloses wherein the protection device has a film or a foil (coating 232, Fig. 3, para 0046). Therefore, it would have been obvious to one of ordinary skill in the art to provide the protection device that has a film or a foil to the invention of Hoffmann for the reasons stated above.
Regarding claim 3, Hoffmann does not disclose wherein the protection device is designed to be fastened to the optical terminating element. Gates discloses wherein the protection device is designed to be fastened to the optical terminating element (para 0045). Therefore, it would have been obvious to one of ordinary skill in the art to provide the protection device is designed to be fastened to the optical terminating element to the invention of Hoffmann for the reasons stated above.
Regarding claim 9, Hoffmann in view of Gates discloses a method (Fig. 1, Hoffmann) for producing the three-dimensional structure in the lithographic material (22, Hoffmann) by means of the laser lithography device (10, Hoffman) according to claim 1 (Fig. 1, para 0039-0045 of Hoffmann, Fig. 1, para 0005, 0008, 0039-0045 of Gates, see rejection of claim 1 above).
Regarding claim 14, Hoffmann discloses a method for producing a three-dimensional structure in a lithographic material (22, para 0039-0041), the method comprising: emitting a laser writing beam (12, para 0039); focusing the laser writing beam in a focus region (20, para 0040); displacing the focus region of the laser writing beam relative to the lithographic material (16, para 0039). However, Hoffmann does not disclose preventing contact between an optical terminating element and the lithographic material. Gates discloses in Fig. 1, a microscope objective for lithography (para 0005) comprising a protection device (130 including oil 137, para 0039, 0040, 0044) for preventing contact between the optical terminating element and the lithographic material (para 0005, 0008, 0040), wherein the protection device is arranged directly on the optical terminating element (110, para 0039, 0040, 0044) to prevent contact between an optical terminating element and the lithographic material (para 0005, 0008, 0040, 0045). Therefore, it would have been obvious to one of ordinary skill in the art to provide a protection device of Gates to the invention of Hoffmann in order to prevent contact between an optical terminating element and the lithographic material and to prevent damages to the optical element by the lithographic material as taught by Gates.
Claim(s) 1 and 3-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoffmann et al. (Hoffmann) in view of Huffman et al. (Huffman) (2022/0350127).
Regarding claim 1, Hoffmann discloses a laser lithography device (10, Fig. 1) for producing a three-dimensional structure in a lithographic material (22, para 0039-0041), the laser lithography device comprising: a laser source (12) for emitting a laser writing beam; a lens (18) for focusing the laser writing beam in a focus region (20, para 0043, 0044), wherein the lens has an optical terminating element (36, para 0045); a scanning device (16, para 0039) for displacing the focus region of the laser writing beam relative to the lithographic material (para 0041-0044). However, Hoffmann does not disclose a protection device for preventing contact
between the optical terminating element and the lithographic material, wherein the protection device is arranged directly on the optical terminating element, and the protection device has an adhesive layer for fastening the protection device the optical terminating element. Huffman discloses in Fig. 1A, a microscope objective (110) for lithography (para 0092) comprising a protection device (140 including fluid 147, para 0092, 0097) for preventing contact between the optical terminating element and the lithographic material (para 0005, 0079-0085, 0093), wherein the protection device is arranged directly on the optical terminating element (110, Fig. 1A, para 0092, 0093, 0097), and the protection device has an adhesive layer for fastening the protection device the optical terminating element (para 0093). Therefore, it would have been obvious to one of ordinary skill in the art to provide a protection device of Huffman to the invention of Hoffmann in order to prevent damages to the optical element by the lithographic material as taught by Huffman.
Regarding claim 3, Hoffmann does not disclose wherein the protection device is designed to be fastened to the optical terminating element. Huffman discloses wherein the protection device is designed to be fastened to the optical terminating element (para 0096). Therefore, it would have been obvious to one of ordinary skill in the art to provide the protection device is designed to be fastened to the optical terminating element to the invention of Hoffmann for the reasons stated above.
Regarding claims 4 and 10-13, Hoffmann does not disclose wherein a transmittance of the protection device for the laser writing beam is at least 80%, 85%, 90%, 92% or 95%. Huffman discloses a protective element (140) for an objective (Fig. 1, para 0092) and transmittance of greater than 90% (para 0071). Therefore, it would have been obvious to one of ordinary skill in the art to provide a protective device with at least 80%, 85%, 90%, 92% or 95% transmittance in order to provide an adequate intensity to the lithographic material.
Regarding claim 5, Hoffmann discloses wherein the lens (18) has a lens housing (30), the optical terminating element (36) received by the lens housing (Fig. 1). Hoffmann does not disclose an element of the lens housing that is unsuitable for contact with the lithographic material, and the protection device covers the element to prevent contact between the element and the lithographic material. Although Huffman does not disclose an element that is unsuitable for contact with the lithographic material, Huffman discloses the protection device (140) that covers not only the terminating element but also the entire bottom portion of the lens housing (120, Fig. 1A and 4). Therefore, it would have been obvious to one of ordinary skill in the art to adjust the size of the protection device so that if any portion of the housing were unstable for contact with the lithographic material, it would have been covered to protect that element or the portion of the lens housing.
Regarding claim 6, Hoffmann does not disclose wherein the protection device has a refractive index that can be corrected by the lens. Huffman discloses wherein the protection device has a refractive index that can be corrected by the lens (para 0095, 0097). Therefore, it would have been obvious to one of ordinary skill in the art to provide the protection device that has a refractive index that can be corrected by the lens in order to decrease reflection or scattering at the boundary of the protection device and the lithographic material.
Regarding claim 7, Hoffmann does not disclose wherein the protection device has a first layer having a first refractive index and a second layer having a second refractive index, and the first refractive index differs from the second refractive index. Huffman discloses a first layer (fluid 147) and a second layer (transparent portion 142, Fig. 4, para 0097). Although Huffman does not disclose the refractive index of the first and second layers, it would have been obvious to one of ordinary skill in the art to provide a fluid having a refractive index different from the transparent portion depending on the design requirement of the lithography device since merely changing the fluid to another fluid having different refractive index would require only a routine skill in the art. Further, it would have been obvious to one of ordinary skill in the art to provide the modified protection device of Huffman to the invention of Hoffman for the reasons stated above.
Regarding claim 8, Hoffman does not disclose a protection device. From the disclosure the purpose of adding a second protection device or a third protection device is to reduce the propagation path of the laser writing beam (Fig. 2-4, pages 18-20). Although Huffman does not disclose a second protection device, Huffman discloses a first protection layer (fluid 147) and a second layer (142, Fig. 4, para 0097). It would have been obvious to one of ordinary skill in the art to change the depth of the first layer (147) or change the distance D2 to affect the focal point 162 (para 0098). Therefore, it would have been obvious to one of ordinary skill in the art to provide the modified Huffman to the invention of Hoffman for the reasons stated above.
Regarding claim 9, Hoffmann in view of Huffman discloses a method (Fig. 1, Hoffmann) for producing the three-dimensional structure in the lithographic material (22, Hoffmann) by means of the laser lithography device (10, Hoffman) according to claim 1 (Fig. 1A, para 0079-0085, 0092, 0093 of Hoffmann, Fig. 1, para 0005, 0008, 0039-0045 of Huffman, see rejection of claim 1 above).
Regarding claim 14, Hoffmann discloses a method for producing a three-dimensional structure in a lithographic material (22, para 0039-0041), the method comprising: emitting a laser writing beam (12, para 0039); focusing the laser writing beam in a focus region (20, para 0040); displacing the focus region of the laser writing beam relative to the lithographic material (16, para 0039). However, Hoffmann does not disclose preventing contact between an optical terminating element and the lithographic material. Huffman discloses in Fig. 1A, a microscope objective (110) for lithography (para 0092) comprising a protection device (140 including fluid 147, para 0092, 0097) for preventing contact between the optical terminating element and the lithographic material (para 0005, 0079-0085, 0093), wherein the protection device is arranged directly on the optical terminating element (110, Fig. 1A, para 0092, 0093, 0097) to prevent contact between an optical terminating element and the lithographic material (para 0092, 0093). Therefore, it would have been obvious to one of ordinary skill in the art to provide a protection device of Huffman to the invention of Hoffmann in order to prevent contact between an optical terminating element and the lithographic material and to prevent damages to the optical element by the lithographic material as taught by Huffman.
Response to Arguments
Applicant's arguments filed Dec. 26, 2025 have been fully considered but they are not persuasive.
Applicant argues that Hoffmann et al. (Hoffmann) does not contain any indication of use of a protection device and “that the lithography material 22 does not come into contact with the objective 18” (page 4 of the response). Applicant argues that the protective device would be “unnecessary” for Hoffmann. However, Hoffmann discloses in para 0052 that in an embodiment the exit lens can be immersed in lithographic fluid. Therefore, one of ordinary skill in the art would be interested in protecting the optical terminating element in the embodiment in which the objective comes into contact with the lithography material as taught by Gates et al. (Gates).
Applicant further argues Gates et al. (Gates) discloses a fluid 137 arranged between the optical output 124 and the protective device 130 for adjusting the refractive index and that the protection device is not arranged directly on the optical terminating element since there is a fluid 137 placed in between. Applicant also argues Gates does not disclose the protection device has an adhesive layer for fastening the protection device to the optical terminating element. However, Gates discloses in para 0044, the index-matched fluid 137 eliminates reflections at the inside surface of the protection device 130. Since the fluid 137 is necessary for the protection device and the objective 110 to work properly, the examiner interprets the fluid 137 as a part of the protection device which is arranged directly on the optical terminating element. Further, the exact claim language is “the protection device has an adhesive layer for fastening the protection device to the optical terminating element”. The exact placement of the adhesive layer is not clarified in the language. The adhesive layer could be anywhere as long as it is used to fasten the protection device to the optical terminating element.
Applicant makes similar arguments regarding Huffman et al. (Huffman). Huffman also discloses the index-matched fluid 147 for eliminating reflections in para 0097. Since the fluid 147 is necessary for the protection device and the objective 110 to work properly, the examiner interprets the fluid 147 as a part of the protection device which is arranged directly on the optical terminating element. Further, the exact claim language is “the protection device has an adhesive layer for fastening the protection device to the optical terminating element”. The exact placement of the adhesive layer is not clarified in the language. The adhesive layer could be anywhere as long as it is used to fasten the protection device to the optical terminating element.
Conclusion
THIS ACTION IS MADE FINAL. 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 PETER B KIM whose telephone number is (571)272-2120. The examiner can normally be reached M-F 8:00 AM - 4:00 PM.
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/PETER B KIM/Primary Examiner, Art Unit 2882 January 17, 2026