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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: “Pulsed laser processing apparatus” or something similar to capture the nature of the inventive concept.
The abstract is objected to for being over 150 words.
Claim Interpretation
The examiner interprets high repetitive frequency to be the wavelength of the laser output which is in accordance with par. 39 of the disclosure of the instant application.
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:
1) "Laser beam applying unit" with the function of "for applying a pulsed laser beam”. In order to emit the pulsed laser beam applicant has identified multiple subfunctions of the primary function:
A) "emitting a pulsed laser beam" via "a laser beam generation unit". The laser beam generation unit itself has multiple sub-functions.
1A) Emitting a pulsed laser beam via a "laser beam generating unit". The laser beam generating unit is identified by applicant as 38 in paragraph 7 of the specification.
2A) "setting the number of laser pulse signals..." via a "pulsed laser beam setting section". Examiner can find no structural support within the specification of what portion of the laser beam applying unit completes this function.
3A) "decimating pulsed laser signals..." via a "pulse period setting section". Examiner can find no structural support within the specification of what portion of the laser beam applying unit completes this function.
4A) "amplifying a power of the pulsed laser beams" via a "power amplifying section". Examiner can find no structural support within the specification of what portion of the laser beam applying unit completes this function.
Based on the discussion of the sub-functions, the function of "applying a pulsed laser beam" by the "laser beam applying unit" is not is not modified by sufficient structure, material, or acts for performing the entirety of the claimed function.
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 § 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-3 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, as set forth in the 112(f) section above sub functions 2A), 3A), and 4A) do not have structural specification support for the "laser generation unit" and is therefore considered to fail to meet the written description requirements for the functions claimed in claim 1 relating to the creation of "a pulsed laser beam". Specifically, the specification has failed to describe any computer or physical controller that supports these functions of creating a pulsed laser beam and prohibit any of these sections/functions from being considered exclusively software. Based on the disclosure the examiner believes the language to be directed to code within a controller or control device to create a pulsed laser beam and the claims have been interpreted as such for prior art examination.
Regarding claim 1, the recitation of “a laser beam applying unit”, the specification fails to establish what particular structure the “a laser beam applying unit” which includes a pulsed laser beam setting section, pulse period setting section, and power amplifying sections create a pulsed laser beam. Specifically, the specification has failed to describe any computer or physical controller that supports these functions and prohibit any of these sections/functions from being considered exclusively software. As such it is ambiguous as to whether these are physical devices, controllers, or code being executed within a controller. Based on the disclosure the examiner believes the language to be directed to code within a controller or control device and the claims have been interpreted as such for prior art examination.
Claims 2 and 3 are also rejected due to their dependence to one or more of the above rejected independent claims.
Regarding claim 3, the recitation of “wherein the pulsed laser beam setting section, the pulse period setting section, and the power amplifying section make settings depending on the kind and crystal structure of the workpiece” lacks written description of how what physical structure of the laser beam generation unit creates a pulsed laser beam by the pulsed laser beam setting section, the pulse period setting section, and the power amplifying section perform the functions of making settings based upon the crystal structure of the workpiece, therefore, because 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 for all claimed structures and various claimed structures are indefinite and unclear. As would be recognized by those of ordinary skill in the art, there are many different ways to adjust laser properties to match the physical properties of a substrate worked upon. Therefore, the specification does not provide sufficient details such that one of ordinary skill in the art would understand which physical properties of a substrate are matched by the experimentation of the disclosure of the instant application to perform(s) the claimed function such that laser properties are properly set to match said physical properties of a workpiece.
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 1-3 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 limitations of “a laser beam applying unit” and by extension the functions thereof completed by "laser beam generating unit" and ““a pulsed laser beam setting section”, “a pulse period setting section for decimating laser pulse signals”, and “a power amplifying section for amplifying a power of the pulsed laser beams” to create "a pulsed laser beam" 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. One skilled in the art would not be apprised of what specific structure are required to meet the claimed functional requirements beyond the setting, decimating, and amplifying of the laser pulses, 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.
Regarding claim 1, the recitation of “a processing-feeding the chuck table” is unclear if the applicant is claiming structure or if the applicant means movement of the chuck table. The examiner interprets the applicant means movement of the chuck table.
Regarding claim 3, the recitation of “wherein the pulsed laser beam setting section, the pulse period setting section, and the power amplifying section make settings depending on the kind and crystal structure of the workpiece” is unclear as to which settings and how the settings are being changed to match what properties of a desired workpiece. The examiner interprets that the aforementioned sections are capable of being changed by a user to match the physical properties of a desired workpiece.
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.
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) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP-2014104484-A Yikio.
Regarding claim 1,
Yikio teaches, except where struck through,
A laser processing apparatus (laser beam irradiation unit 5) comprising:
a chuck table (chuck table mechanism 3) for holding a workpiece thereon (page 4 par. 3);
a laser beam applying unit (laser beam irradiation means 6) for applying a laser beam (LB) to the workpiece held on the chuck table (page 4 par. 3);
and a processing-feeding the chuck table and the laser beam applying unit relatively to each other (page 5 par. 5),
wherein the laser beam applying unit includes:
a laser beam generation unit (beam oscillating unit 62) for emitting a pulsed laser beam (page 6 par. 5), and a beam condenser (condenser 64) for converging the pulsed laser beam emitted from the laser beam generation unit and applying the pulsed laser beam to the workpiece held on the chuck table (page 4 par. 3),
and the laser beam generation unit includes: a laser oscillation source (laser beam oscillator 621) for emitting laser pulse signals at a high repetitive frequency (page 5 par. 7-11 teaches the frequency of the laser source 621 by frequency setting means, therefore the laser beam oscillator 621 is capable of creating a high repetitive frequency),
a pulsed laser beam setting section for setting the number of laser pulse signals to be emitted from the laser oscillation source to enable the laser oscillation source to emit a single pulsed laser beam that includes the set number of laser pulse signals (page 5 par. 11 teaches the number of burst pulse rays is set to 10 fine pulses and is therefore anticipated to be set by an corresponding pulsed laser beam setting section),
a pulse period setting section (pulse width adjusting means 623) for decimating laser pulse signals to be emitted from the laser oscillation source to set a period between pulsed laser beams that are adjacent to each other (page 4 par. 3 teaches pulse width adjusting means 623 setting a pulse width of individual pulses, while the frequency is set by repetition frequency setting means 622 as taught in page 4 par. 3 and number of pulses are set as taught in page 5 par. 11, the pulse width adjusting means 623 therefore is inherently involved in setting the pulse period the relationship is also taught in fig. 7),
and a power amplifying section (output adjustment means 63) for amplifying a power of the pulsed laser beams with the pulse period set therebetween (page 4 par. 4 teaches output adjustment means 63 used to adjust the output of the laser beam oscillation means 62).
Yikio discloses the claimed invention but does not disclose expressly the wherein the pulsed laser beams have a repetitive frequency set to a value calculated by dividing the high repetitive frequency by a sum of the number of laser pulse signals that make up the single pulsed laser beam and the number of laser pulse signals to be decimated at one location, and the pulsed laser beams have a pulse duration set to a value calculated by multiplying a value produced by subtracting “1” from the number of laser pulse signals that has been set by the pulsed laser beam setting section, by the reciprocal of the high repetitive frequency.
It would have been an obvious matter of design choice to a person of ordinary skill in the art to modify the system as taught by Yikio to achieve the desired repetitive frequency and pulse duration, because Applicant has not disclosed that choosing a high repetitive frequency and setting a pulse duration based on the disclosed calculation of the instant application provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant' s invention to perform equally well with processing conditions as taught by Yikio on pages 5 and 6, because it provides processing conditions suitable for forming a modified layer (Yikio page 6 par. 6), therefore, it appears to be an arbitrary design consideration which fails to patentably distinguish over Yikio.
Therefore, it would have been an obvious matter of design choice to modify Yikio to obtain the invention as specified in the claim(s).
Regarding claim 2,
Yikio teaches,
The laser processing apparatus according to claim 1 (as discussed above),
wherein the high repetitive frequency is equal to or higher than 100 MHz (page 5 par. 7 teaches a laser wavelength of 1064nm which translates to a frequency greater than 100Mhz).
Regarding claim 3,
Yikio teaches,
The laser processing apparatus according to claim 1 (as discussed above),
wherein the pulsed laser beam setting section, the pulse period setting section, and the power amplifying section make settings depending on the kind and crystal structure of the workpiece (Yikio page 6 par. 6 provides processing conditions suitable for forming a modified layer of a workpiece, see 112(a) and (b) above).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM M ECKARDT whose telephone number is (313)446-6609. The examiner can normally be reached 6 a.m to 2:00 p.m EST Monday to Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward Landrum can be reached at (571) 272-5567. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ADAM MICHAEL. ECKARDT
Assistant Examiner
Art Unit 3761
/ADAM M ECKARDT/Examiner, Art Unit 3761
/WOODY A LEE JR/Primary Examiner, Art Unit 3761
Prosecution Insights