Non-Final Rejection
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Following various preliminary amendments, claims 1-10 are cancelled and claims 11-30 added. Claims 11-30 are pending.
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.
Claims 15-18 and 25-28 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Each of these claims requires that “the solid-state laser medium is selected from any one of ceramics selected from the group comprised of [several compounds] doped with anyone selected from the group comprised of [several elements].” (emphasis added). These are Markush type limitations, which are generally acceptable, but each of these underlined phrases turns this into an improper Markush grouping because they are open ended, not closed ended. “A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.” MPEP 2173.05(h) I. (citation omitted). This would be overcome if each instance in each claim is changed from “comprised” to “consisting.”
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.
Claims 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/069272 (“WO ‘272”) in view of US 7,149,231 (“Afzal”).
Regarding claim 11, WO ‘272 in Fig. 13, [0030] discloses a Q-switch structure comprising: a solid-state laser medium 8; and a magneto-optical material 10, wherein the solid-state laser medium and the magneto-optical material are joined and integrated ([0030]); and the solid-state medium and the magneto-optical material are directly joined.
It is not disclosed that the solid-state laser medium has a thickness of 1 mm or more; WO ‘272 does not appear to give any thickness. Afzal shows an integral gain medium and Q-switch in which a solid-state laser medium 12A and a Q-switch 14 are directly joined and integrated. Fig. 4 and discussion starting col. 4 line 50; col. 6 lines 4-8. Afzal further shows the laser medium may have a thickness of greater than 1 mm. Col. 6 lines 43-46; col. 8 lines 17-20. It would have been obvious to a person of ordinary skill in the art to make the laser medium greater than 1 mm as the use of a known technique to improve similar devices in the same way. MPEP 2143 I.C. The device was known in the art as in WO ‘272, except for the size of the laser medium, but Afzal shows that it is normal to have the laser medium sized in the claimed range. A person of skill in the art could have made the laser medium of such size and the result would have been predictable. Both lasers operate in similar ways, Afzal shows that this is a normal size for a doped garnet Q-switched laser medium, so it is natural to look to art like Afzal to determine a size to make the laser medium, and the size would not be expected to change the operation in unexpected ways. Furthermore, a change in size without any unexpected result is generally considered obvious. MPEP 2144.04 IV.A. Again, it does not appear that the change in size would cause the operation to be different or unexpected, therefore this is not a patentable distinction.
Regarding claim 12, this is a device claim, but the claim is drawn only to the method steps of making the device, i.e. product-by-process limitations. The examiner fails to see how this process imparts any particular structure distinguishing the claim, therefore it does not get patentable weight. See MPEP 2113.
Regarding claims 13 and 14, the magneto-optical material 10 is a bismuth-substituted rare earth iron garnet. WO ‘272 [0020].
Regarding claims 15-18, the laser medium 8 may be materials as claimed. WO ‘272 [0016].
Regarding claims 19-20, the device is a laser including the Q-switch structure above and also includes magnetic flux generator 12,14 (excitation coil and permanent magnet 14) arranged between mirrors 8a and 16. While magnet 14 is not shown in Fig. 13, it is shown in other figures and it would have been obvious to a person skilled in the art to include it, as WO ‘272 teaches that using the magnet permits a reduction in the size of coil 12 and makes the change in current needed to change the Q value small. WO ‘272 [0023].
Claims 21-30 are rejected under 35 U.S.C. 103 as being unpatentable over WO ‘272 in view of Afzal, and further in view of Aichele et al., Garnet layers prepared by liquid phase epitaxy for microwave and magneto-optical applications – a review, Crystal Research and Technology, Vol. 38, No. 7–8, pp. 575-587 (2003) (“Aichele”).
Regarding claim 21, the claim is a method claim of producing the Q-switch structure having the same structure as claim 11 above, and therefore the limitations are largely taught as above. The claim additionally requires that the magneto-optical material is formed by crystal growth on the solid-state laser medium by using the solid-state laser medium as a substrate. Claim 22 further requires that the crystal growth is liquid phase epitaxy. WO ‘272 states that the magneto-optic material and laser medium are integrated, but does not say how.
First, it was already known in the art that a Q-switch material can be integrated onto a solid-state laser medium by liquid phase epitaxy. Afzal col. 6 lines 4-10. It was also known in the art that bismuth substituted iron garnets can be formed on other garnet substrates by LPE. Aichele, abstract, sections 1-2. It should be noted that several garnets are possible choices of the gain medium in WO ‘272. [0016]. It would have been obvious to a person of ordinary skill in the art to use LPE as the means to get the magneto-optic material onto the laser rod as the use of a known technique to improve similar methods in the same way. MPEP 2143 I.C. The base device in WO ‘272 already includes the laser medium and magneto-optic material integrated, but does not say how they are integrated. Afzal shows that similar devices of Q-switch/rod have been integrated using LPE, and Aichele shows that similar materials have been integrated using LPE. A person of ordinary skill could have applied these teachings to the base WO ‘272 device and the result would have been predictable. We already know that these parts are integrated, and other references show us that this same type of part and this same type of material may be integrated using LPE, so we should expect that the integration could be done in the same way and yield the same result of an integrated garnet and bismuth substituted garnet.
Regarding claims 23-30, see the rejections of claims 13-20 above.
Claims 11-20 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over WO ‘272 in view of Afzal, and further in view of Aichele. The claims are taught as in the rejections of claims 11-20 above. To the extent that applicant may argue that “directly joined” or “joined and integrated” (as in claim 11) or “formed by crystal growth” (as in claim 12) actually do impart some different structure to the claims that is not found in WO ‘272 and is exclusive to the growth of the Q-switch onto the laser medium, this growth is also obvious in view of Afzal and Aichele for the same reasons as discussed above re: the method claims.
Conclusion
Double patenting was considered with 18/563,966, but is not deemed appropriate at this time. The claims in that application explicitly require adhesive films between the Q-switch and laser medium, which goes against the present invention of being directly joined and integral.
US 6,212,209 Fig. 5 shows magneto-optic Q-switch 14 integral with gain medium 12.
US 5,832,010 was applied in the EPO and the examiner agrees that Figs. 10-11 show a magneto-optic Q-switch 74 integral with a solid-state laser rod 92.
Zhang (IEEE Transactions on Magnetics, see PTO 892) also shows LPE of bismuth substituted garnets on other garnets.
US 2007/0280305 teaches a magneto-optic Q-switch 120 that may be integrated with laser rod 115, but they are not directly integral as lens 140 is in between.
US 2019/0229486 Fig. 15 shows a laser medium 3 bonded to magneto-optic Q-switch 702, but there is a layer 6 in between.
US 4,982,405 Fig. 2(c) shows a laser medium 10 bonded to magneto-optic Q-switch 230, but there is a layer 22 in between.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Menefee whose telephone number is (571)272-1944. The examiner can normally be reached M-F 7-4.
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/JAMES A MENEFEE/Primary Examiner, Art Unit 2828
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