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 Amendments
Claims 1, 4, 5 and 11 have been amended. Claim 2 has been canceled. Claims 1 and 3-11 are currently pending.
Claims 1-3, 6-7 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mitani of record (JP2002219753A).
Response to Arguments
Applicant' s arguments, see Remarks, filed 12/10/2025, with respect to the rejection(s) of claim(s) 1 and 3-11 under 35 USC § 102 and 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Pieger (US 2020/0269500 A1).
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.
Claims 1 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Mitani of record (JP2002219753A) in view of Pieger (US 2020/0269500 A1).
Regarding claims 1 and 11, Mitani teaches a method of using a laser beam for curing a liner for rehabilitation of pipes or canals (P0055-58, fig.5) with a process for curing a liner for rehabilitation of a pipe or a canal (ABS), comprising:
a. inserting a liner comprising at least a resin-impregnated fibre tube (P0040) into the pipe to be rehabilitated or the canal to be rehabilitated (P0041);
b. erecting the liner by pressing the liner against the inner surface of the pipe or canal to be rehabilitated (P0041-42); and
c. curing a resin system in the resin-impregnated fibre tube by moving a device through the erected liner (P0042-43),
wherein a laser light is deflected in the device by at least one optics at an angle from 0.5 to 179 degrees such that the laser light impinges on the inner surface of the erected liner and cures the resin system in the fibre tube (light reflects off mirror 51 onto liner, P0051, fig.5).
Mitani uses a mirror to manipulate a laser beam but is silent to using at least one axicon for generating an annular beam profile of a laser beam impinging on the inner surface of the erected liner.
Pieger, in the same field of endeavor, laser curing, teaches an axicon that generates an annular beam profile of a laser beam impinging on a surface to be cured (P0021-0025, P0052-0062).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used an axicon to shape a laser beam into an annular or ring shape to have an intensity distribution that is not too strongly inhomogeneous and that increases in the radial direction to the outer edge of the beam profile as taught by Pieger (P0022).
"The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Regarding claim 3, Mitani teaches the optics is connected to a laser source via a light guide (P0046, “the optical fiber cable 30 functions as an optical fiber for transmitting the energy of light as an electromagnetic wave transmitter, that is, a so-called light guide”).
Regarding claim 4, Modified Mitani is silent to the diameter of the axicon. However, Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235. Modified Mitani discloses the claimed invention except for the diameter. It would have been obvious to one having ordinary skill in the art at the time the invention was made to choose the claimed diameter, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to choose any desired diameter for the purpose of repairing liners of various sizes.
Regarding claim 5, Pieger teaches that an aperture angle of at least one axicon should be chosen in a way that optimizes intensity of the beam (P0052) but is not specific that the aperture angle is in a range from 20 degrees to 150 degrees. Although it is not specifically stated, it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as aperture angle through routine experimentation in the absence of a showing of criticality in the claimed angle. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 6, Mitani teaches the optics comprises a diffractive optical element (P0053).
Regarding claim 7, Pieger teaches an embodiment where the optics comprises at least two axicons (P0024).
It would have been obvious to have two axicons instead of one for the purpose of altering the intensity distribution of the second beam profile of the heating beam as taught by Pieger (P0024).
Further, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Regarding claim 8, Mitani teaches the use of a laser for curing (P0044) but is silent to the specific wavelength in a range from 325 to 600 nm.
However, teaching reference Xometry (2024) shows that lasers can produce a wide range of wavelengths that overlaps the claimed range fully (see figure in article).
It would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as wavelength through routine experimentation in the absence of a showing of criticality in the claimed size. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). One would have been motivated to choose the wavelength needed for the purpose of curing the specific material used.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Mitani of record (JP2002219753A) in view of Pieger (US 2020/0269500 A1) as applied to claim 1, further in view of Fucht Johann of record (US2023375122A1 corresponding to WO 2022078708 A1).
Regarding claim 9, Mitani teaches the resin system contains photocurable resin (P0003) but is silent to a photoinitiator where one absorption maximum of the photoinitiator is in a range from 325 to 600 nm.
Fucht Johann, in the same field of endeavor, liners, teaches a photoinitiator where one absorption maximum of the photoinitiator is in a range from 300-450nm which overlaps the claimed range of 325 to 600 nm (P0017).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a photoinitator reactive in this wavelength range as this is chosen based on the materials curing responsiveness.
Further, overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of Fucht Johann’s wavelength range that corresponds to the claimed range. In re Malagari, 184 USPQ 549 (CCPA 1974).
Regarding claim 10, Mitani teaches at least one laser generates a laser light (P0044) but is silent to it having a wavelength in a range from 975 to 1800 nm and the laser light is converted to a laser light having a wavelength in a range from 325 to 600 nm by a frequency converter before entering the optics.
Fucht Johann teaches laser light with an intensity in a range from 1010 to 1016 W/m2 is used in the method according to the invention. The efficiency of the generation of light by frequency conversion can be controlled by the intensity (P0054, P0063) which overlaps the claimed range. Further, the output is converted to a wavelength of 420nm (P0071) which is fully within the claimed range.
Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of Fucht Johann’s wavelength that corresponds to the claimed range. In re Malagari, 184 USPQ 549 (CCPA 1974).
One would be motivated to choose a specific wavelength so as to cure the chosen material.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/E.H.F./Examiner, Art Unit 1741
/JaMel M Nelson/Primary Examiner, Art Unit 1743