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 .
Response to Election/Restrictions
Applicant's election with traverse of Group II (claims 8-20) in the reply filed on 07/31/2026 is acknowledged. The traversal is on the ground(s) that Claims 8 and 16 have been amended to recite "a mandrel configured to mount a brush that includes a plurality of nodules extending from a surface of the brush; and a laser system configured to cut the plurality of nodules to a predetermined distance from a central axis of the brush, " and now the system of Group II can’t be used in a materially different process of using that product. This is not found persuasive because the amendment still only requires the system to comprise a mandrel, laser system, inlet, a CNC machine, and a guide. Even through the system is now “configured” to do work on a brush, the brush is still not a part of the system, whereas, conversely, in the withdrawn method claims (Group I: claims 1-7) the brush is part of the system. Furthermore, as discussed in the 102 and 103 rejection sections below, prior art references (James (US 5585017 A) and Nagahama (EP 1859892 A2)) teach all of the structure of the system in claims 8 and 16, even though they do not expressly disclose their apparatuses working on a brush. Thus, the apparatus claims (Group II: claims 8-20) can be used in a materially different process.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/07/2023 and 04/01/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner. Examiner note: the IDS submitted on 12/07/2023 listed the foreign document number as “3155928A1”, however it should read “3155928,” and the kind code should read “A1.” The foreign patent document has been correctly listed on the “PTO-892 Notice of References Cited.”
Inventorship
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
“118” in Fig. 5A.
“110A” and “120” in Fig. 5B.
“102A” in Fig. 11A.
“P” in Fig. 11B.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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.
Specification
The disclosure is objected to because of the following informalities:
“In some examples, the method includes a length of the brush is defined by” (Pg. 5, paragraph 0031). Should read “In some examples, the method includes a length of the brush defined by.”
“To cut nodes 102” (Pg. 7, paragraph 0043). Should read “to cut nodules 102.”
“The cutting via the laser system can creates a planar surface” (Pg. 14, paragraph 0066). Should read “the cutting via the laser system can create a planar surface.”
Appropriate correction is required.
Claim Objections
Claims 10 and 19 are objected to because of the following informalities:
Claim 10 recites the limitation "a length of the cylindrical brush" in line 11. Claim 10 should read “a length of the brush.”
Claim 19 recites the limitation "a beam" in line 12. Claim 19 should read “the beam."
Claim 19 recites the limitation "a nodule" in line 12. Claim 19 should read “the nodule."
Appropriate correction is required.
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.
Claims 12 and 16-20 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.
Claim 12 recites the limitation “a threshold amount of moisture.” It is unclear as to what the “threshold amount of moisture” encompasses, thus making the scope of the claim unclear. Examiner note: It is acknowledged that the specification describes, “During an example cutting operation, the brush 100 is kept moist to prevent staining, burning, deformation, and/or other damage to the PVA material. The moisture level can range from light saturation (e.g., 5% weight) to approximate full saturation (e.g., ~300% weight)” (Pg. 8, paragraph 0047). However, it is unclear as to what moisture level is the “threshold amount of moisture.”
Claim 16 recites the limitation “a threshold amount of moisture.” It is unclear as to what the “threshold amount of moisture” encompasses, thus making the scope of the claim unclear. Examiner note: It is acknowledged that the specification describes, “During an example cutting operation, the brush 100 is kept moist to prevent staining, burning, deformation, and/or other damage to the PVA material. The moisture level can range from light saturation (e.g., 5% weight) to approximate full saturation (e.g., ~300% weight)” (Pg. 8, paragraph 0047). However, it is unclear as to what moisture level is the “threshold amount of moisture.”
Claim 18 recites the limitation "the two or more portions." There is insufficient antecedent basis for this limitation in the claim. “The two or more portions” is established in claim 17, however, claim 18 depends upon claim 16. Thus, for the purposes of examination claim 18 will be interpreted as having dependence on claim.
Claims 17-20 are rejected for their dependence on an indefinite claim.
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 (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 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.
Claim(s) 8-11, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by James et al. (US 5585017 A), hereinafter James.
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Figure 4 (James)
Regarding claim 8, James discloses a system for forming a brush to clean a surface, the system comprising: a mandrel (James’ Fig. 4, “mandrel 21” [Col. 4, line 57]) configured to mount (“A starting blank tubular workpiece is mounted on an appropriate arbor, or mandrel 21 that fixes it in a cylindrical shape and allows rotation about its longitudinal axis in bearings 22” [Col. 4, lines 56-59]) a brush that includes a plurality of nodules extending from a surface of the brush; and a laser system (James’ Fig. 4, “laser 37,” “laser beam 36,” and “carriage 26” [Col. 5, lines 13-20]) configured to cut (“laser beam is used to drill a predetermined pattern of tapered apertures in the workpiece in such a manner to form a topographical array of peaks and valleys surrounding each aperture of the workpiece” [Col. 2, lines 15-18]) the plurality of nodules to a predetermined distance from a central axis of the brush.
In addition to structural limitations, claim 8 recites functional limitations drawn toward the intended use or manner of operating the claimed apparatus in the claim preamble. The functional limitations are: “for forming a brush to clean a surface.” The claim preamble has been read in the context of the entire claim and the intended use of the claimed invention does not result in a structural difference between the claimed invention and the prior art. “The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "‘extraneous’ limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction… During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963) (The claims were directed to a core member for hair curlers and a process of making a core member for hair curlers. The court held that the intended use of hair curling was of no significance to the structure and process of making.)” (See MPEP 2111.02-II).
When the cited prior art teaches all of the positively recited structure of the claimed apparatus, it will be held that the prior art apparatus is capable of performing all of the claimed functional limitations of the claimed apparatus. The courts have held that: (1) "apparatus 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), and (2) a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP § 2114.
Claim 8 recites, “a mandrel configured to mount a brush that includes a plurality of nodules extending from a surface of the brush; and a laser system configured to cut the plurality of nodules to a predetermined distance from a central axis of the brush." The "brush" of claim 8 is not positively-recited structure of the system, thus neither is the “plurality of nodules,” the “surface of the brush,” or the “central axis of the brush.” MPEP 2115 states, "[a] claim is only limited by positively recited elements. Thus, '[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.' In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)." James discloses the structure of claim 8 and therefore discloses all of the positively-recited structure of claim 8.
Regarding claim 9, James further comprises a guide (James’ Fig. 4, “guide ways 25” [Col. 4, lines 63-67]) configured to depress, deform, or move a first nodule of the plurality of nodules (“one or more guide ways 25 that allow carriage 26 to traverse the entire length of mandrel 21” [Col. 4, lines 63-65]; Examiner note: similar to the structure of the instant application the guides described in James are a structure that directs the motion of something else) as the laser system (James’ Fig. 4, “laser 37,” “laser beam 36,” and “carriage 26” [Col. 5, lines 13-20]) cuts a second nodule of the plurality of nodules.
Claim 9 recites, “a first nodule of the plurality of nodules as the laser system cuts a second nodule of the plurality of nodules." The "first nodule" and the “second nodule” of claim 9 is not positively-recited structure of the system of 9, due to the “brush” of claim 8 not being positively-recited structure. MPEP 2115 states, "[a] claim is only limited by positively recited elements. Thus, '[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.' In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)." James discloses the structure of the system of claim 9 and therefore discloses all of the positively-recited structure of claims 9 and 8.
Regarding claim 10, James further discloses wherein the brush has cylindrical shape and is defined by a first portion and a second portion along a length of the cylindrical brush, the first portion having a first diameter and the second portion having a second diameter larger than the first diameter.
Claim 10 recites, “the brush has cylindrical shape and is defined by a first portion and a second portion along a length of the cylindrical brush." The "cylindrical shape," “first portion,” and “second portion” are not positively-recited structure of the system of claim 10, due to the “brush” of claim 8 not being positively-recited structure. MPEP 2115 states, "[a] claim is only limited by positively recited elements. Thus, '[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.' In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)." James discloses the structure of the system of 10 and therefore discloses all of the positively-recited structure of claims 10 and claim 8.
Regarding claim 11, James further discloses wherein the first portion corresponds to a central portion of the length of the brush, and the second portion corresponds to an edge of the brush.
Claim 11 recites, “a central portion of the length of the brush" and “an edge of the brush.” The "central portion" and the “edge” of claim 11 are not positively recited structure of the system of claim 11, due to the “brush” of claim 8 and 10 not being positively-recited structure. MPEP 2115 states, "[a] claim is only limited by positively recited elements. Thus, '[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.' In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)." James discloses the structure of the systems of 11 and therefore discloses all of the positively-recited structure of claims 11, 10, and claim 8.
Regarding claim 14, James further discloses wherein the brush is formed of Polyvinyl Acetal (PVA).
Claim 14 recites, “the brush is formed of Polyvinyl Acetal (PVA)" The " Polyvinyl Acetal (PVA)" of claim 14 is not positively-recited structure of the system of claim 14, due to the brush not being positively-recited structure of claim 8. MPEP 2115 states, "[a] claim is only limited by positively recited elements. Thus, '[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.' In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)." James discloses the structure of the system of claim 14 and therefore discloses all of the positively-recited structure of claims 14 and 8.
Regarding claim 15, James further discloses wherein the laser system (James’ Fig. 4, “laser 37,” “laser beam 36,” and “carriage 26” [Col. 5, lines 13-20]) comprises a CO2 laser source (“While this invention could be used with a variety of lasers, the preferred laser is a fast flow CO2 laser” [Col. 5, lines 31-32]).
Claim Rejections - 35 USC § 103
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 12, 13, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over James (US 5585017 A) in view of Nagahama et al. (EP 1859892 A2), hereinafter Nagahama.
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Figure 9 (James)
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Figure 1 (Nagahama)
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Figure 3 (Nagahama)
Regarding claim 12, James further comprises an inlet (James’ Fig. 9, “orifice strips 92” [Col. 8, lines 59-62]) configured to channel fluid (“orifice strips 92 for applying water or other fluid to a fibrous web 93 placed on the outside surface of the curved plates” [Col. 8, lines 59-62]) from a fluid source (James’ Fig. 9, “water ejecting manifold 89” [Col. 9, lines 6-9]) through the brush and the plurality of nodules to maintain a threshold amount of moisture in the brush and the laser system (James’ Fig. 4, “laser 37,” “laser beam 36,” and “carriage 26” [Col. 5, lines 13-20]) cuts the plurality of nodules.
James does not explicitly disclose that the inlet configured to channel fluid from a fluid source as the laser system cuts.
However, Nagahama discloses a system where an inlet (Nagahama’s Fig. 1, “coolant supply nozzle 700” [0037]) configured to channel fluid from a fluid source (Nagahama’s Fig. 1, “coolant supply unit”) as the laser system (Nagahama’s Fig. 3, “heat treatment tool 504” [0011]) operates (“Further, a supply nozzle 700 as a cooling device to supply a forced cooling fluid such as a coolant to the processed surface of the workpiece W is mounted on the light focusing head 600. Even when the supply nozzle 700 is not mounted on the light focusing head 600, the supply nozzle 700 only has to supply the coolant to the processed surface of the workpiece W corresponding to the movement of light focusing head 600. The coolant supplied may be used commonly with a coolant for the shaping or finishing. The forced cooling means for the processed surface of the workpiece W may include water, air, liquid nitrogen etc. other the coolant” [0037]).
Claim 12 recites, “a threshold amount of moisture." The "threshold amount of moisture" of claim 12 is not positively-recited structure of the system of claim 12, as the brush is not positively-recited structure of the system of claim 8. MPEP 2115 states, "[a] claim is only limited by positively recited elements. Thus, '[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.' In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)." James in view of Nagahama discloses the structure of the system of claim 12 and therefore disclose all of the positively-recited structure of claims 12 and 8.
It would have been prima facia obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified James to incorporate the teachings of Nagahama to have an inlet that supplies fluid from a fluid source as the laser system operates. Doing so allows for the workpiece to be cooled after it has been heated up from the laser systems operation, as recognized by Nagahama (“The laser beam is irradiated from the light focusing lens 620 to the processed surface of the workpiece W so as to heat it at a temperature of 1000 °C, and the coolant is supplied from the supply nozzle 700 to the processed surface so as to immediate cool it up to almost 200 °C” [0046]).
Regarding claim 13, James further comprises a computer control machine (“computer control” [Col. 6, lines 9-10]) configured to secure and move (“These data are entered into a computer control for operating the laser drilling machine”[Col. 6, lines 9-10]; “This laser off/on sequence is repeated for the first revolution, at which point the mandrel is back to starting position, carriage drive 33 has repositioned the carriage one unit and the computer is ready to do column 43a” [Col. 7, lines 9-13]) one or both of the brush or the laser system (James’ Fig. 4, “laser 37,” “laser beam 36,” and “carriage 26” [Col. 5, lines 13-20]).
James does not explicitly disclose a computer numerical control (CNC) machine configured to secure and move one or both of the brush or the laser system.
However, Nagahama discloses a computer numerical control (CNC) machine (Fig. 1, “computer numerical control (CNC)” [0013]) configured to secure and move (“The combined processing machine 1 is controlled in its whole drive by a computer numerical control (CNC) device (not shown) and comprises a combined processing machine body and attachment devices (not shown). The attachment devices include a laser oscillator, an oil supply unit, a cooling device, an air supply unit, a coolant supply unit, a chip collecting device, and a duct system for connecting these devices to the combined processing machine body” [0013]; “The laser beam diameter to be focused can be controlled according to the position of light focusing head 600 to the processed surface of workpiece W, for example, so that it can be set to vary within the range of 1 mm to 10 mm. Otherwise, a mechanism to move the light focusing lens 620 mounted on the light focusing head 600 in the light axis direction can be installed, so that the distance to the processed surface of the workpiece W can be varied, and the laser beam diameter to be focused can be also varied” [0034]) one or both of the brush or the laser system (Nagahama’s Fig. 3, “heat treatment tool 504” [0011]).
It would have been prima facia obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified James to incorporate the teachings of Nagahama to have a computer numerical control (CNC). Doing so allows for efficient and repeatable processes. Additionally, a CNC requires minimal human intervention to control multiple different elements of a machining tool, as recognized by Nagahama (“The combined processing machine 1 is controlled in its whole drive by a computer numerical control (CNC) device (not shown), and comprises a combined processing machine body and attachment devices (not shown). The attachment devices include a laser oscillator, an oil supply unit, a cooling device, an air supply unit, a coolant supply unit, a chip collecting device, and a duct system for connecting these devices to the combined processing machine body” [0013]).
Regarding claim 16, James further discloses a system for forming a brush to clean a surface, the system comprising: a mandrel (James’ Fig. 4, “mandrel 21” [Col. 4, line 57]) configured to mount (“A starting blank tubular workpiece is mounted on an appropriate arbor, or mandrel 21 that fixes it in a cylindrical shape and allows rotation about its longitudinal axis in bearings 22” [Col. 4, lines 56-59]) a brush that includes a contact surface; a laser system (James’ Fig. 4, “laser 37,” “laser beam 36,” and “carriage 26” [Col. 5, lines 13-20]) configured to cut one or more patterns (“laser beam is used to drill a predetermined pattern of tapered apertures in the workpiece in such a manner to form a topographical array of peaks and valleys surrounding each aperture of the workpiece” [Col. 2, lines 15-18]) into the contact surface; and an inlet (James’ Fig. 9, “orifice strips 92” [Col. 8, lines 59-62]) configured to channel fluid (“orifice strips 92 for applying water or other fluid to a fibrous web 93 placed on the outside surface of the curved plates” [Col. 8, lines 59-62]) from a fluid source (James’ Fig. 9, “water ejecting manifold 89” [Col. 9, lines 6-9]) through the brush and the contact surface to maintain a threshold amount of moisture in the brush and the laser system (James’ Fig. 4, “laser 37,” “laser beam 36,” and “carriage 26” [Col. 5, lines 13-20]) cuts (“laser beam is used to drill a predetermined pattern of tapered apertures in the workpiece in such a manner to form a topographical array of peaks and valleys surrounding each aperture of the workpiece” [Col. 2, lines 15-18]) the contact surface.
In addition to structural limitations, claim 16 recites functional limitations drawn toward the intended use or manner of operating the claimed apparatus in the claim preamble. The functional limitations are: “for forming a brush to clean a surface.” The claim preamble has been read in the context of the entire claim and the intended use of the claimed invention does not result in a structural difference between the claimed invention and the prior art. “The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "‘extraneous’ limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction… During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963) (The claims were directed to a core member for hair curlers and a process of making a core member for hair curlers. The court held that the intended use of hair curling was of no significance to the structure and process of making.)” (See MPEP 2111.02-II).
When the cited prior art teaches all of the positively recited structure of the claimed apparatus, it will be held that the prior art apparatus is capable of performing all of the claimed functional limitations of the claimed apparatus. The courts have held that: (1) "apparatus 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), and (2) a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP § 2114.
James does not explicitly disclose that the inlet configured to channel fluid from a fluid source as the laser system cuts the contact surface.
However, Nagahama discloses a system where an inlet (Nagahama’s Fig. 1, “coolant supply nozzle 700” [0037]) configured to channel fluid from a fluid source (Nagahama’s Fig. 1, “coolant supply unit”) as the laser system (Nagahama’s Fig. 3, “heat treatment tool 504” [0011]) operates (“Further, a supply nozzle 700 as a cooling device to supply a forced cooling fluid such as a coolant to the processed surface of the workpiece W is mounted on the light focusing head 600. Even when the supply nozzle 700 is not mounted on the light focusing head 600, the supply nozzle 700 only has to supply the coolant to the processed surface of the workpiece W corresponding to the movement of light focusing head 600. The coolant supplied may be used commonly with a coolant for the shaping or finishing. The forced cooling means for the processed surface of the workpiece W may include water, air, liquid nitrogen etc. other the coolant” [0037]).
Claim 16 recites, “a brush includes a contact surface” and “a threshold amount of moisture.” The “brush,” “contact surface,” and “threshold amount of moisture” of claim 16 are not positively-recited structures of the system of claim 16. MPEP 2115 states, "[a] claim is only limited by positively recited elements. Thus, '[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.' In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)." James in view of Nagahama disclosed the structure of the system of 16 and therefore disclose all of the positively-recited structure of claim 16.
It would have been prima facia obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified James to incorporate the teachings of Nagahama to have an inlet that supplies fluid from a fluid source as the laser system operates. Doing so allows for the workpiece to be cooled after it has been heated up from the laser systems operation, as recognized by Nagahama (“The laser beam is irradiated from the light focusing lens 620 to the processed surface of the workpiece W so as to heat it at a temperature of 1000 °C, and the coolant is supplied from the supply nozzle 700 to the processed surface so as to immediate cool it up to almost 200 °C” [0046]).
Regarding claim 17, James further discloses wherein the laser system (James’ Fig. 4, “laser 37,” “laser beam 36,” and “carriage 26” [Col. 5, lines 13-20]) is configured to selectively cut (“laser beam is used to drill a predetermined pattern of tapered apertures in the workpiece in such a manner to form a topographical array of peaks and valleys surrounding each aperture of the workpiece” [Col. 2, lines 15-18]) two or more portions of the contact surface to remove a desired amount of a skin layer on the contact surface at the two or more portions.
Claim 17 recites, “two or more portions of the contact surface to remove a desired amount of a skin layer on the contact surface at the two or more portions ." The "two or more portions" and “a desired amount of a skin layer” of claim 17 are not positively-recited structure of the system of 17, as the “brush” is not positively-recited structure of claim 16. MPEP 2115 states, "[a] claim is only limited by positively recited elements. Thus, '[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.' In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)." James in view of Nagahama disclosed the structure of the system of claim 17 and therefore disclosed all of the positively-recited structure of claim 16.
Regarding claim 18, James further discloses wherein the two or more portions comprise a plurality of nodules, the brush configured to rotate about a central axis to align a nodule of the plurality of nodules with a beam (James’ Fig. 4, “beam 36” [Col. 5, line 21]) of the laser system (James’ Fig. 4, “laser 37,” “laser beam 36,” and “carriage 26” [Col. 5, lines 13-20]).
Claim 18 recites, “a plurality of nodules, the brush configured to rotate about a central axis to align a nodule of the plurality of nodules." The “plurality of nodules,” “a central axis,” and “a nodule” of claim 18 are not positively-recited structure of the system of 18. MPEP 2115 states, "[a] claim is only limited by positively recited elements. Thus, '[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.' In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)." James in view of Nagahama disclose the structure of the system of 18 and therefore disclose all of the positively-recited structure of claim 16.
Regarding claim 19, James further discloses wherein the laser system (James’ Fig. 4, “laser 37,” “laser beam 36,” and “carriage 26” [Col. 5, lines 13-20]) is configured to move along (“one or more guide ways 25 that allow carriage 26 to traverse the entire length of mandrel 21” [Col. 4, lines 63-65]) the contact surface to align a beam (James’ Fig. 4, “beam 36” [Col. 5, line 21]) of the laser system (James’ Fig. 4, “laser 37,” “laser beam 36,” and “carriage 26” [Col. 5, lines 13-20]) with a nodule of the plurality of nodules.
Claim 19 recites, “a nodule.” The “nodule” of claim 19 is not positively-recited structure of the system of claim 19. MPEP 2115 states, "[a] claim is only limited by positively recited elements. Thus, '[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.' In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)." James in view of Nagahama discloses the structure of the system of 19 and therefore disclose all of the positively-recited structure of claims 18 and 16.
Regarding claim 20, James further discloses wherein the laser system (James’ Fig. 4, “laser 37,” “laser beam 36,” and “carriage 26” [Col. 5, lines 13-20]) comprises a CO2 laser source (“While this invention could be used with a variety of lasers, the preferred laser is a fast flow CO2 laser” [Col. 5, lines 31-32]) to generate a beam (James’ Fig. 4, “beam 36” [Col. 5, line 21]) to cut (“laser beam is used to drill a predetermined pattern of tapered apertures in the workpiece in such a manner to form a topographical array of peaks and valleys surrounding each aperture of the workpiece” [Col. 2, lines 15-18]) the contact surface.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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Figure 2 (Ow)
Regarding claims 8 and 16, Ow et al. (US 20100193482 A1), hereinafter Ow, discloses:
A mandrel (Ow’s Fig. 2, “tubing 50” [0062]).
A laser system (Ow’s Fig. 2, “laser 65” [0062]).
A CNC machine (Ow’s Fig. 2, “CNC controller” and “CNC-opposing collet fixture 55” and “CNC X/Y table 70” [0063]).
Conclusion
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/E.E.U./Examiner, Art Unit 3761 08/31/2026
/JUSTIN C DODSON/Primary Examiner, Art Unit 3761
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