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 .
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 group setting part” in claims 1 and 5, wherein the place holder “part” is preceded by a functional language “group setting” without sufficiently reciting what the “group setting part” structurally entails.
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. However, the specification describes what the “group setting part” does or functionally performs, see ¶ 0026 – 0029, without providing any reference as to what the “group setting part” structurally is in performing the recited function.
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.
Further, although “a laser beam irradiation unit”, “a feed mechanism”, “a laser oscillation mechanism” and “a time interval setting part” of claim 1 are formulated as a limitations to be interpreted under § 112(f), they are not, since one of ordinary skill in the art would readily understand: “a laser beam irradiation unit” to be a laser beam source and equivalent thereof, “a feed mechanism” to be a ball screw motor for moving the chuck table and equivalent thereof, see ¶ 0026 – 0028 and FIG.1, “a laser oscillation mechanism” to be a laser oscillator and equivalent thereof, and “a time interval setting part” to be a laser pulse delay generator and equivalent thereof, see ¶ 0035 and FIG.3. “Examiners will apply 35 U.S.C. 112(f) to a claim limitation that uses the term “means” or generic placeholder associated with functional language, unless that term is (1) preceded by a structural modifier, defined in the specification as a particular structure or known by one skilled in the art, that denotes the type of structural device (e.g., ‘filters’), or (2) otherwise modified by sufficient structure or material for achieving the claimed function”, See MPEP § 2181.I.C.
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 1 – 7 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.
Regarding claims 1 and 5, the claim limitation ““a group setting part”” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. It is not clear what “a group setting part” structurally is, is it a controller? a program running on a processor? Is it a filter? What structure “a group setting part” is in reference to? The disclosure only describes what functions the “group setting part” does to the pulse laser without reciting the structure for performing the recited function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2 – 4 and 6 – 7 inherit this rejection by virtue of their dependency.
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.
Claim(s) 1 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morikazu et al. (US 20180257171 A1), hereinafter “Morikazu”, in view of Morishige (JP 2014104484 A) and hereinafter “Morishige”.
Regarding claim 1, Morikazu discloses a laser processing apparatus (a laser processing apparatus 100, FIG.1) comprising:
a chuck table that holds a workpiece (a chuck table 22 of the holding means 6 for holding the workpiece, (0017 and see FIG.1));
a laser beam irradiation unit that irradiates the workpiece held by the chuck table with a pulsed laser beam (a laser beam irradiating unit 102 for irradiating the workpiece held by the chuck table, (0016 -0017 and see FIGS.1 - 2)); and
a feed mechanism that moves the chuck table and the laser beam irradiation unit relative to each other to execute processing feed (moving means 8 for moving the holding means 6 that has the cuck table 22 and moves the chuck table 22 and the laser beam irradiating means 102 relative to each other to execute processing feed, (0016 – 0018 and see FIG.1)),
wherein the laser beam irradiation unit includes (the laser beam irradiation unit 102 includes, (0019)):
a laser oscillation mechanism that emits the pulsed laser beam (a laser oscillator 104, (0020, FIG.2)), and a beam condenser that condenses the pulsed laser beam emitted by the laser oscillation mechanism and irradiates the workpiece held by the chuck table with the pulsed laser beam (a condenser 42 that includes a condensing lens 42a for condensing the laser beam from the oscillator 104 and applying a laser beam to the workpiece held on the chuck table 22 of the holding means 6 (0019 – 00 20 and see FIG.2)), and
the laser oscillation mechanism includes a group setting part that sets a plurality of the pulsed laser beams into one group and a time interval setting part that sets a time interval of the pulsed laser beams that configure the one group and sets a repetition frequency in such a manner as to regard the one group as one unit (the oscillator 104 groups at least two more pulsed laser beams (LB1, LB2) or more as one group, and one group is regarded as one unit for repeated processing and oscillation interval of the grouped pulsed laser beams is set by the oscillator, (0021 – 0023 and see FIG.2)).
Morikazu does not explicitly teach a group setting part that sets a plurality of the pulsed laser beams into one group and a time interval setting part that sets a time interval of the pulsed laser beams that configure the one group.
Morishige that relates to a laser processing apparatus that irradiates a workpiece, such as a semiconductor wafer (0001), also teaches the laser processing device processes a group of pulsed laser beams as one unit by burst pulse formation unit 624 and sets a time interval between the group of the burst pulses by a pulse width adjusting unit 623 of a controller 8, (0017 – 0020, 0026 – 0030 and see FIGS. 2, 3, 7a &7b). Morishige further discusses that such a system that includes a burst pulse forming unit and delay (pulse width) setting unit provides a laser processing apparatus that can suppress light leakage and form a good modified layer inside a workpiece without causing ablation at the incident surface, (0006).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Morikazu’s laser processing apparatus to include a group setting part that sets a plurality of the pulsed laser beams into one group and a time interval setting part that sets a time interval of the pulsed laser beams that configure the one group in order to suppress light leakage and form a good modified layer inside a workpiece without causing ablation at the incident surface as taught in Morishige. POSITA apprised of Morishige’s burst pulse formation and pulse width adjusting units would easily and naturally include them in Morikazu’s laser processing apparatus to realize the advantages of suppressing light leakage and forming a good modified layer inside a workpiece free from ablation at the incident surface of the workpiece.
Regarding claim 4, Morikazu in view of Morishige teaches the laser processing apparatus according to claim 1, wherein the repetition frequency is set by decimating a predetermined number of groups from among a plurality of groups from which the pulsed laser beams are emitted in one second (a thinning-out means 106 for guiding the pulsed laser beams LB′ necessary for processing by optic element 112 that changes an optical path according to a voltage signal applied thereto and a damper 114 that absorbs the pulsed laser beams LB′ whose optical path is changed from the group, Morikazu (0020 – 0022)).
Claim(s) 2 – 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morikazuin view of Morishige in further view of Kreuter et al. (US 20030155336 A1) and hereinafter “Kreuter”.
Regarding claim 2, Morikazu in view of Morishige teaches the laser processing apparatus according to claim 1, the laser oscillation mechanism includes a plurality of laser that emit the pulsed laser beams, the one group is set by the pulsed laser beams emitted by the plurality of laser in the group setting part, and signals are input to the plurality of laser (processes a group of pulsed laser beams as one unit by burst pulse formation unit 624 and sets a time interval between the group of the burst pulses by a pulse width adjusting unit 623 of a controller 8, Morishige (0017 – 0020, 0026 – 0030 and see FIGS. 2, 3, 7a &7b).
Morikazu in view of Morishige does not explicitly teach the laser beams are laser diodes.
However, Kreuter that relates to machining a workpiece by means of a plurality of pulse laser beams (0001), also teaches that the plurality of laser beam sources can be laser diodes as they are inexpensive compared to other laser sources, for example Q-switch lasers.
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the laser processing apparatus of Morikazu in view of Morishige to employe laser diodes as the pulse laser source as they are known to be inexpensive laser sources as taught in Kreuter.
Regarding claim 3, Morikazu in view of Morishige teaches the laser processing apparatus according to claim 1, wherein the laser oscillation mechanism includes a plurality of laser oscillators that emit the pulsed laser beams (each laser beam source (Laser 1a – 1c) has oscillating components (6, 7, 7’) before combining the pulsed laser beams from each source to be applied on to the workpiece, Kreuter (see FIG.4), the one group is set by the pulsed laser beams emitted by the plurality of laser oscillators in the group setting part, (the laser beams from each sources (1 a, 1 b, 1c) are brought together to form a group, Kreuter (0058 – 0059 and see FIG.4)),a voltage is applied to the plurality of laser oscillators with delay by a desired time by a delayed voltage instrument in the time interval setting part (a time interval between the group of the burst pulses (pulse width is det by a pulse width adjusting unit 623 of a controller 8, Morishige (0017 – 0020, 0026 – 0030 and see FIGS. 2, 3, 7a &7b).
Allowable Subject Matter
Claim 5 would be allowable if rewritten or amended 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. Claims 6 – 7 would be allowable by virtue of their dependency.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 4 – 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 – 5 of U.S. Patent No. US 12337412 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim limitations of the reference patent US 12337412 B2 would anticipate the claim limitations the current application of same row as illustrated in the table herein.
Claims of application No.18486625
Claims of patent US 12337412 B2
Claim 1. A laser processing apparatus comprising: a chuck table that holds a workpiece; a laser beam irradiation unit that irradiates the workpiece held by the chuck table with a pulsed laser beam; and a feed mechanism that moves the chuck table and the laser beam irradiation unit relative to each other to execute processing feed, wherein the laser beam irradiation unit includes: a laser oscillation mechanism that emits the pulsed laser beam, and a beam condenser that condenses the pulsed laser beam emitted by the laser oscillation mechanism and irradiates the workpiece held by the chuck table with the pulsed laser beam, and the laser oscillation mechanism includes a group setting part that sets a plurality of the pulsed laser beams into one group and a time interval setting part that sets a time interval of the pulsed laser beams that configure the one group, and sets a repetition frequency in such a manner as to regard the one group as one unit.
Claim 1. A laser processing apparatus comprising: a chuck table for holding a workpiece thereon; a laser beam applying unit for applying pulsed laser beams to the workpiece held on the chuck table; and a feed mechanism for processing-feeding the chuck table and the laser beam applying unit relative to each other, wherein the laser beam applying unit includes a laser oscillating mechanism for emitting the pulsed laser beams and a beam condenser for converging the pulsed laser beams emitted from the laser oscillating mechanism and applying the converged pulsed laser beams to the workpiece held on the chuck table, and the laser oscillating mechanism includes a group setting section for establishing the number of the pulsed laser beams to be applied to the workpiece until a time after which melted debris produced by the pulsed laser beams applied to the workpiece is solidified, and assigns the pulsed laser beams to a group, under conditions that, within a period of time which is shorter than a period of time in which the melted debris is produced from the workpiece by a pulsed laser beam applied to the workpiece, and within a period of time after which a plasma generated from the workpiece by the pulsed laser beam applied thereto becomes extinct, a next pulsed laser beam is applied to the workpiece to sustain the plasma uninterruptedly to break growing debris, and a time interval setting section for establishing a time interval between the group and another group adjacent thereto as representing a period of time taken for heat generated by the application of the pulsed laser beams of the group to be dissipated, and also establishing time intervals between the pulsed laser beams of the group, the laser oscillating mechanism setting a repetitive frequency for each group of the pulsed laser beams as one unit.
*Note- the italicized limitation of this claim anticipate claim 1 of the current application.
Claim 4. The laser processing apparatus according to claim 1, wherein the repetition frequency is set by decimating a predetermined number of groups from among a plurality of groups from which the pulsed laser beams are emitted in one second.
Claim 4. The laser processing apparatus according to claim 1, wherein the laser oscillating mechanism sets the repetitive frequency by decimating a predetermined number of groups from among the groups of the pulsed laser beams emitted in a second.
Claim 5. A laser processing method of executing processing of a workpiece by using a laser processing apparatus including a laser oscillation mechanism that includes a group setting part that sets a plurality of pulsed laser beams into one group and a time interval setting part that sets a time interval of the pulsed laser beams that configure the one group, the laser oscillation mechanism setting a repetition frequency in such a manner as to regard the one group as one unit, the laser processing method comprising: a groove forming step of forming grooves by ablation processing by irradiating the workpiece with the pulsed laser beams; and a growing debris breaking step of breaking, by plasma, growing debris formed in the groove forming step, wherein to simultaneously execute the growing debris breaking step in the groove forming step, the time interval of the pulsed laser beams is set in the time interval setting part in such a manner that irradiation with a next pulsed laser beam is executed within a time after which the plasma generated from the workpiece due to the irradiation with a pulsed laser beam disappears and the plasma continues to exist without being interrupted.
Claim 5. A laser processing method of processing a workpiece by using a laser processing apparatus having a laser oscillating mechanism that includes a group setting section for establishing a group of pulsed laser beams and a time interval setting section for establishing time intervals between the pulsed laser beams of the group, the laser oscillating mechanism setting a repetitive frequency for each group of the pulsed laser beams as one unit, the laser processing method comprising: a groove forming step of forming grooves in the workpiece by way of ablation by applying the pulsed laser beams to the workpiece; and a debris breaking and restraining step of breaking growing debris produced in the groove forming step and restraining melted debris from being produced in the groove forming step, wherein, in order to simultaneously carry out the debris breaking and restraining step when the groove forming step is carried out, the group setting section establishes the number of the pulsed laser beams of the group to be applied to the workpiece until a time after which the melted debris produced by the pulsed laser beams applied to the workpiece is solidified, under conditions that, within a period of time which is shorter than a period of time in which the melted debris is produced from the workpiece by a pulsed laser beam applied to the workpiece, and within a period of time after which a plasma generated from the workpiece by the pulsed laser beam applied thereto becomes extinct, a next pulsed laser beam is applied to the workpiece to sustain the plasma uninterruptedly to break the growing debris, and the interval setting section establishes a time interval between the group and another group adjacent thereto as representing a period of time taken for heat generated by the application of the pulsed laser beams of the group to be dissipated, and also establishing time intervals between the pulsed laser beams of the group.
*Note- the italicized limitation of this claim anticipate claim 5 of the current application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DILNESSA B BELAY whose telephone number is (571)272-3136. The examiner can normally be reached M-F approx. 8:00 am - 5:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Crabb can be reached at (571)270-5095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DILNESSA B BELAY/Examiner, Art Unit 3761
/JOHN J NORTON/Primary Examiner, Art Unit 3761
Prosecution Insights