[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 .
Election/Restrictions
1. Applicant’s election of Group I: Claims 1-10 in the reply filed on 12/01/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Objections
2. Claim 1 is objected to because of the following informalities:
Claim 1 line 11 states “inputs an acquired image” where line 10 states “acquires an image”. Line 11 should read “inputs the acquired image” to show that the image of line 10 is the inputted image and not a different image.
Appropriate correction is required.
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.
3. 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:
“Imaging Device” in claim 1 and elsewhere. “Imaging” is a function, “device” is a generic placeholder, and most of the claims do not provide sufficient structure to perform the function of “imaging”. Structure is found in [0024] of Applicant’s Specification which notes a camera and will be interpreted as such and equivalents. This 112(f) interpretation does not apply to claim 10 as claim 10 adds sufficient structure to perform the functionality of imaging with a coaxial vertical line camera.
“Processing Unit” in claim 1 and elsewhere. “Processing” is a function, “unit” is a generic placeholder, and the claims lack claims do not provide sufficient structure to perform the function of “processing”. Support is found in [0026] as a computer and will be interpreted as such and equivalents.
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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
4. Claims 1-5, and 7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s):
Claim 1- the processing unit acquires an image of a work taken by the imaging device, inputs an acquired image of the work to a learning model that, if an image of a work is input, outputs information related to a state of a separation layer of the work, to derive information related to a state of the separation layer, and outputs derived information related to the state of the separation layer. The limitation process steps of acquiring, inputting, deriving, and outputting as well as the integration of a learning model, are processes that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of a generic processor that performs generic processing. That is, other than reciting “processing unit,” nothing in the claim element precludes the step from practically being performed in the mind. The steps of “Acquir[ing] an image” and “output[ing] derived information” can be performed by the mind. In regard to the “input[ing] an acquired image of the work to a learning model” step, the human mind is a learning model that forms judgements based inputted data, which can then be outputted as derived information via speech or writing. A human mind can tell the state of a separation layer of a work by visual inspection, and from repeated inspections can derive further information due to experience. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Claim 2- the state of the separation layer includes at least one of a separated state, a non-separated state and a soot occurring state. These are all judgments, and falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Claim 3- the processing unit outputs the information related to the state of the separation layer in association with an image acquired from the imaging device. Generic outputting is a step that can be performed in the mind, and falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Claim 4- the processing unit determines whether or not separation at the separation layer is successfully performed on the basis of the derived information related to the state of the separation layer, and outputs a result of the determination. Determination is a judgement of the mind and generic outputting is a step that can be performed in the mind. Consequentially this claim falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Claim 5- the information related to the state of the separation layer includes information on a region of a separated part indicating a part where the separation layer is separated, and the processing unit calculates an area ratio of the separated part to an area of the substrate, determines that a separation state is successful if the calculated area ratio is equal to or higher than a predetermined ratio, and determines that a separation state is unsuccessful if the calculated area ratio is lower than a predetermined ratio. The calculation and evaluation with a predetermined ratio steps fall directly into the “Mathematical Concepts” grouping of abstract ideas. The determination on the successfulness of a separation state is a judgement of the mind and falls within the “Mental Processes” grouping of abstract ideas. The judgement is based on the mathematical calculation, and therefore together are an integrated abstract idea, and accordingly this claim recites an abstract idea.
Claim 7- the processing unit divides an image acquired from the imaging device into a plurality of block images of a predetermined size; and inputs each of the divided block images into the learning model to derive information related to a state of a separation layer for each of the block images. Dividing the image into a plurality of block images of predetermined size is a form mental analysis involving thinking of a particular part of an image seen, and can be performed by the human mind. The inputting and derived information from a learning model is a function of the human mind as the human mind is a form of learning model that forms judgements based inputted data, which then provides derived information. Consequentially this claim falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
For Claims 1-5, and 7 the judicial exceptions of these claims are not integrated into a practical application because: nothing is done with the outputted information beyond mental processes and therefore there is a lack of practical application.
Claims 1-5 and 7 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because for all of these claims the processing unit remains a generic computer, and the only additional limitations are a generic laser lift-off device with a generic imaging device. Sercel et al. (US 2011/0132549) acknowledges that a laser lift-off device combined with an imaging device are part of a known technique ([0014]) and is therefore a conventional element and the inventive concept of these claims are not significantly more that the judicial exemption. The claims are not patent eligible.
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.
5. 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.
6. Claims 1-4, 7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kishimoto (US 2020/0287356) and Lauber et al. (US 2021/0364450; hereafter known as Lauber).
Regarding claim 1, Kishimoto teaches a laser lift-off device ([0001]) that irradiates a work for the purpose of separating a separation layer from a substrate ([0107]) that comprises an imaging device that takes an image of the work irradiated with laser light; (sensor- 76; which can be image sensor- [0116]) and a processing unit that performs processing based on an image taken by the imaging device (controller- 70; [0117]). The processing unit more specifically ([0117]) acquires an image of the work taken by the imaging device (“based on the output of the sensor”) inputs the acquired image of the work into a program (“follows the program”) that, if an image of a work is input, outputs information related to a state of a separation layer of the work (“issues appropriate instructions to”) to derive information related to a state of the separation layer (“detect whether or not delamination failure occurred”- [0116]). The instructions of the processing device are outputs of derived information related to the state of the separation layer.
Kishimoto does not teach that the program is a learning model. Lauber teaches of using a learning model type of program ([0068]) that has the advantage being more accurate than previous methods ([0032]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to use a learning model as suggested by Lauber for the program of Kishimoto for the advantage of greater accuracy.
Regarding claim 2, Kishimoto detects both a separated and non-separated state (delamination failure or no delamination failure- [0116]). Irrespectively, the “state of the separation layer” is a property of the article worked upon by an apparatus. Claim analysis is highly fact-dependent. 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). See MPEP 2115. Consequentially, the additional claim limitations do not differentiate from the combination of Kishimoto and Lauber.
Regarding claim 3, the outputted information related to the state of the separation layer of Kishimoto is associated with the acquired output of the sensor ([0117]), which for an image sensor is an image.
Regarding claim 4, the processing unit determines whether or not separation at the separation layer is successfully performed on the basis of the derived information related to the state of the separation layer (“detect whether or not delamination failure occurred”- [0116]), and then outputs a result of the determination (“issues appropriate instructions”- [0117]).
Regarding claim 7, in applying Lauber as in claim 1, Lauber teaches that the learning model divides an image acquired from the imaging device into a plurality of block images of a predetermined size (pixels) that it then uses to derive information related to a state of a separation layer for each of the block images ([0060]).
Regarding claim 10, as seen in Figure 21b the imaging device (imaging camera- 76a) is coaxial with the lasers, which in a vertical line as seen in Figure 10, and therefore can be interpreted as a vertical line camera.
Allowable Subject Matter
7. Claim 5 is not taught by the prior art, but must overcome the 101 Rejection prior to allowability and then rewritten in independent form including all of the limitations of the base claim and any intervening claims.
8. Claims 6, and 8-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 5, Kishimoto teaches that information related to the state of separation can include subregions ([0142]), but does not teach or render obvious calculating an area ratio and associated limitations.
Regarding claim 8, in applying Lauber as in claim 1, Lauber teaches that various functions and outputs can be performed from the learning model ([0048]), but does not specify a heat map. As consequence, the prior art does not teach or render obvious the generation of a heat map and associated limitations.
9. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER S WRIGHT whose telephone number is (571) 272-8343. The examiner can normally be reached Monday- Friday 8:30am-5:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached on 571-273-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER S WRIGHT/Examiner, Art Unit 1745
/ALEX B EFTA/Primary Examiner, Art Unit 1745
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