DETAILED ACTION
This non-final action replies to application, filed Aug. 15, 2024, that is a broadening reissue application of 16/853742, now U.S. Pat. 11,486,629 (“the ’629”) with a co-filed amendment that amends specification to provide notice of reissue application, cancels claim 16, amends claims 1, 6-7, 12, 14-15, and 17-18 and adds new claims 23-27. Claims 1-15 and 17-27 are pending.
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 .
Reissue Application Declaration and 35 USC 251
The reissue application declaration by inventor, filed on Aug. 15, 2024, for this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. A reissue application declaration by the inventor (PTO/AIA /05) is defective since the declared statement fails to link a specified limitation(s) proposed as being removed being a cause of the patent at issue here to be rendered inoperative or invalid. In this case, the declaration states in-part, “The phrase "the beam shift mechanism" of claims 7, 12 and 14 lacks proper antecedent basis, and the reissue application corrects this error. The patentee claimed less than he had the right to claim in the patent. At least the scope of independent claims 1, 6 and 18 is broadened by removing "a memory that stores corrected processing data" and the scope of independent claims 1, 6, 15 and 18 is also broadened by removing some limitations, for example, the limitations with respect to controlling the first mirror (and the laser oscillator)” that fails to link/declare that specified limitation(s) proposed as being removed causes the ‘629 patent to be rendered inoperative or invalid. Also, the declaration states removing a specified pending limitation, e.g., "a memory that stores corrected processing data", that regards a permissible error but it fails to link that limitation to causing ‘629 patent to be inoperative or invalid. See MPEP 1414 II. (C). See 37 CFR 1.175 and MPEP § 1414. See In re Tanaka, 640 F.3d 1246, 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011).
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. §251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 1-15 and 17-27 are rejected as being based upon a defective reissue application declaration by the inventor under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action. See 37 CFR 1.175 and MPEP § 1414.
Recapture
Claims 1-14, and 18-26 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspects (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application (e.g. surrender-generating limitation). Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Below are the pertinent findings of fact relevant to this rejection:
04/20/2020
The 16/853742 application (hereafter the ‘742 application) was filed having 26 claims.
10/12/2022
A restriction action was mailed with Group I associated with claims 1-19, drawn to a laser processing apparatus and method, classified in B23K26/0643 and Group II associated with claims 20-26, drawn to a method of generating corrected data, classified in B23K26/50. The Invention of Groups I and II was deemed related as combination and subcombination.
10/25/2022
Applicant filed response of election without traverse of Group I, claims 1-19 in reply to restriction requirement.
01/31/2023
A first action non-final was mailed rejecting claims 1 and 4-5 as anticipated by US2016/0039045 (Webster), rejecting claim 7 as obvious over Webster, indicating claims 17-19 as allowed, and claims 2-3 and 8-16 as objected as dependent upon rejected base claim.
02/09/2023
Applicant filed reply/amendment cancelling claims 2-3 and 20-26, amending claim 1 to incorporate limitation in claim 2, rewriting claim 8 into independent format, rewriting claim 3 into independent format as new claim 27 and adding claims 28-31.
03/17/2023
An allowability notice was mailed with reasons for allowance stating “allowance of claims 1, 4-19, 27-31 is indicated as none of the cited prior art discloses or suggests wherein the corrected processing data is corrected processing data for processing the workpiece, which is corrected in advance to eliminate a deviation of an arrival position of at least one of the processing laser beam and the measurement beam, which is caused by chromatic aberration of the lens, on the surface of the workpiece.”
A reissue will not be granted to "recapture" claimed subject matter which was surrendered in an application to obtain the original patent. See MPEP §1412.20. A three step process is used to apply the recapture rule:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.” See MPEP §1412.02(I).
Regarding step 1 of the three-step process we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims. Upon review of the new independent claim 1 of the present reissue application in comparison to claims 1 of ‘629 Patent, the Examiner finds that the Applicant through the Aug. 15, 2024 Amendment herein has broadened the claims by omitting the following limitations in claim 1: “a surface of”, “a memory that stores corrected processing data”, “the laser oscillator, the first mirror, and ”, “the corrected”, “is corrected processing data for processing the workpiece, which is”, “at least one of” and “the surface of”, as similarly shown in table below. The noted amendment replaces “position” with --positions-- and also removes “the” and “of an”. Bolded text in tables below regard surrendered matter based on examination history in 16/853742, as noted above.
Claim 1 herein, as amended on 08/15/2024
Claim 1 of ’629 Patent
A laser processing apparatus comprising:
A laser processing apparatus comprising:
a laser oscillator that oscillates a processing laser beam at a processing point to be processed on [a surface of] a workpiece;
an optical interferometer that emits a measurement beam to the processing point and generates an optical interference intensity signal based on interference generated due to an optical path difference between the measurement beam reflected at the processing point and a reference beam;
a first mirror that changes traveling directions of the processing laser beam and the measurement beam;
a second mirror that changes an incident angle of the measurement beam onto the first mirror;
a lens that focuses the processing laser beam and the measurement beam on the processing point;
[a memory that stores corrected processing data;]
a control unit that controls [the laser oscillator, the first mirror, and] the second mirror based on [the corrected] processing data; and
a measurement processing unit that derives a depth of a keyhole generated at the processing point by the processing laser beam, based on the optical interference intensity signal,
wherein the processing data includes [the] corrected processing data [is corrected processing data for processing the workpiece, which is] corrected in advance to eliminate a deviation between [of an] arrival [position] positions of [at least one of] the processing laser beam and the measurement beam, which is caused by chromatic aberration of the lens, on [the surface of] the workpiece.
a laser oscillator that oscillates a processing laser beam at a processing point to be processed on a surface of a workpiece;
an optical interferometer that emits a measurement beam to the processing point and generates an optical interference intensity signal based on interference generated due to an optical path difference between the measurement beam reflected at the processing point and a reference beam;
a first mirror that changes traveling directions of the processing laser beam and the measurement beam;
a second mirror that changes an incident angle of the measurement beam onto the first mirror;
a lens that focuses the processing laser beam and the measurement beam on the processing point;
a memory that stores corrected processing data;
a control unit that controls the laser oscillator, the first mirror, and the second mirror based on the corrected processing data; and
a measurement processing unit that derives a depth of a keyhole generated at the processing point by the processing laser beam, based on the optical interference intensity signal,
wherein the corrected processing data is corrected processing data for processing the workpiece, which is corrected in advance to eliminate a deviation of an arrival position of at least one of the processing laser beam and the measurement beam, which is caused by chromatic aberration of the lens, on the surface of the workpiece.
Although the comparison in table/discussion above regards claim 1 herein, claim 6 herein omits similar limitations (broadens) as recited in claim 1 as shown in table next.
Claim 6 herein, as amended on 08/15/2024
Claim 6 of ’629 Patent
A laser processing apparatus comprising:
A laser processing apparatus comprising:
a laser oscillator that oscillates a processing laser beam at a processing point to be processed on [a surface of] a workpiece;
an optical interferometer that emits a measurement beam to the processing point and generates an optical interference intensity signal based on interference generated due to an optical path difference between the measurement beam reflected at the processing point and a reference beam;
a first mirror that changes traveling directions of the processing laser beam and the measurement beam;
a second mirror that changes an incident angle of the measurement beam onto the first mirror;
a lens that focuses the processing laser beam and the measurement beam on the processing point;
[a memory that stores corrected processing data;]
a control unit that controls [the laser oscillator, the first mirror, and] the second mirror based on [the corrected] processing data; and
a measurement processing unit that derives a depth of a keyhole generated at the processing point by the processing laser beam, based on the optical interference intensity signal,
wherein the processing data includes corrected processing data [is data obtained by correcting processing data] generated in advance [for processing the workpiece] such that a deviation between [of an] arrival [position] positions of [at least one of] the processing laser beam and the measurement beam on [the surface of] the workpiece, which is caused by the chromatic aberration of the lens[, and a deviation between an angle of the keyhole and an angle of the measurement beam are eliminated].
a laser oscillator that oscillates a processing laser beam at a processing point to be processed on a surface of a workpiece;
an optical interferometer that emits a measurement beam to the processing point and generates an optical interference intensity signal based on interference generated due to an optical path difference between the measurement beam reflected at the processing point and a reference beam;
a first mirror that changes traveling directions of the processing laser beam and the measurement beam;
a second mirror that changes an incident angle of the measurement beam onto the first mirror;
a lens that focuses the processing laser beam and the measurement beam on the processing point;
a memory that stores corrected processing data; a control unit that controls the laser oscillator,
a control unit that controls the laser oscillator,
the first mirror, and the second mirror based on the corrected processing data; and
a measurement processing unit that derives a depth of a keyhole generated at the processing point by the processing laser beam, based on the optical interference intensity signal,
wherein the corrected processing data is data obtained by correcting processing data generated in advance for processing the workpiece such that a deviation of an arrival position of at least one of the processing laser beam and the measurement beam on the surface of the workpiece, which is caused by the chromatic aberration of the lens, and a deviation between an angle of the keyhole and an angle of the measurement beam are eliminated.
Although the comparison in table/discussion above regards claim 1 herein, claim 18 herein omits limitations (broadens) from original claim 3 rewritten as new claim 27 (renumbered to claim 18) as shown in table next.
Claim 18 herein, as amended on 08/15/2024
Claim 18 of ’629 Patent
A laser processing apparatus comprising:
A laser processing apparatus comprising:
a laser oscillator that oscillates a processing laser beam at a processing point to be processed on [a surface of] a workpiece;
an optical interferometer that emits a measurement beam to the processing point and generates an optical interference intensity signal based on interference generated due to an optical path difference between the measurement beam reflected at the processing point and a reference beam;
a first mirror that changes traveling directions of the processing laser beam and the measurement beam;
a second mirror that changes an incident angle of the measurement beam onto the first mirror;
a lens that focuses the processing laser beam and the measurement beam on the processing point;
[a memory that stores corrected processing data;]
a control unit that controls [the laser oscillator, the first mirror, and] the second mirror based on [the corrected] processing data; and
a measurement processing unit that derives a depth of a keyhole generated at the processing point by the processing laser beam, based on the optical interference intensity signal,
wherein the processing data includes corrected processing data including [includes an output indication value indicating an intensity of the processing laser beam oscillated by the laser oscillator, a first indication value indicating an operation amount by which the first mirror is operated, and a second] a first indication value indicating an operation amount by which the second mirror is operated, and
the [values being] first indication value is set in advance for each processing point such that a deviation between arrival positions of the processing laser beam and the measurement beam, which is caused by chromatic aberration of the lens, on the workpiece is to be eliminated.
a laser oscillator that oscillates a processing laser beam at a processing point to be processed on a surface of a workpiece;
an optical interferometer that emits a measurement beam to the processing point and generates an optical interference intensity signal based on interference generated due to an optical path difference between the measurement beam reflected at the processing point and a reference beam;
a first mirror that changes traveling directions of the processing laser beam and the measurement beam;
a second mirror that changes an incident angle of the measurement beam onto the first mirror;
a lens that focuses the processing laser beam and the measurement beam on the processing point;
a memory that stores corrected processing data;
a control unit that controls the laser oscillator, the first mirror, and the second mirror based on the corrected processing data; and
a measurement processing unit that derives a depth of a keyhole generated at the processing point by the processing laser beam, based on the optical interference intensity signal,
wherein the corrected processing data includes an output indication value indicating an intensity of the processing laser beam oscillated by the laser oscillator, a first indication value indicating an operation amount by which the first mirror is operated, and a second indication value indicating an operation amount by which the second mirror is operated, the values being set in advance for each processing point.
Regarding step 2, Examiner finds that some of the broadening aspects relate to subject matter surrendered during prosecution of the 16/853742 application leading to the original claims of ‘629 Patent. The Examiner finds that the Applicant through their Aug. 15, 2024 Amendment in this reissue has broadened the claims 1, 6 and 18 herein by omitting limitations relating to the surrendered subject matter from original claims 2, 3, and 8 during examination of the ‘742 application as now particularly recited, that regards language added into then independent claim 1 by Applicant in the reply filed Feb 9, 2023 amendment in 16/853742 application. As noted above in the findings of fact, the Applicant added the limitations “wherein the corrected processing data is corrected processing data for processing the workpiece, which is corrected in advance to eliminate a deviation of an arrival position of at least one of the processing laser beam and the measurement beam, which is caused by chromatic aberration of the lens, on the surface of the workpiece” of claim 2 into claim 1, and combined the limitation “wherein the corrected processing data includes an output indication value indicating an intensity of the processing laser beam oscillated by the laser oscillator, a first indication value indicating an operation amount by which the first mirror is operated, and a second indication value indicating an operation amount by which the second mirror is operated, the values being set in advance for each processing point” of claim 3 with claim 1 as rewritten into independent claim 27 (renumbered as claim 18), and combined claim 1 with limitation “wherein the corrected processing data is data obtained by correcting processing data generated in advance for processing the workpiece such that a deviation of an arrival position of at least one of the processing laser beam and the measurement beam on the surface of the workpiece, which is caused by the chromatic aberration of the lens, and a deviation between an angle of the keyhole and an angle of the measurement beam are eliminated” of claim 8 as rewritten into independent claim 8 (renumbered as claim 6). It is emphasized that Applicant added these limitations to obtain ‘629 patent, where these now omitted features/limitations regard surrendered subject matter. So that the record is complete, there is also broadening in claim 15 due to omission of “the processing laser beam and”, “corrected”, and “the first mirror and”, but the limitations in claims 15-17 of ‘629 regard original limitations of claims 17-19 in ‘742 application that were indicated as allowable in first action, as noted above in table highlighting its examination. Therefore, there is no surrendered subject matter with regard to those limitations in claim 15 herein.
As noted above, Applicant added these features in their response/amendment during examination to obtain ‘629 patent. Thus, the above noted added/bolded limitations: “is corrected processing data for processing the workpiece, which is” (claim 1), “the surface of” (claim 1 and 6), “and a deviation between an angle of the keyhole and an angle of the measurement beam are eliminated” (claim 6), and “includes an output indication value indicating an intensity of the processing laser beam oscillated by the laser oscillator, a first indication value indicating an operation amount by which the first mirror is operated, and a second” (claim 18) in issued claims 1, 6 and 18 in ‘629 regards subject matter surrendered during prosecution of the '742 Application leading to the original ‘629 Patent. From prosecution of ‘742 Application, the noted limitations regarding surrendered subject matter must be recited in present claims to avoid improper recapture.
Regarding step 3, Examiner further determines, to the extent there is narrowing limitation(s) herein as compared to ‘629 claims, the narrowing limitation(s) do not materially narrow the surrendered subject matter such that they are not directed to the surrendered subject matter.
Thus, in summary, the Examiner specifically finds that claims 1, 6 and 18 (and their dependent claims) have eliminated noted limitations through amendment in this application for which the claims of the original Patent were allowed. The June 2025 Amendment herein attempts to improperly recapture surrendered subject matter explicitly surrendered during prosecution of ‘742 Application leading to the ‘629 Patent since an amended/argued limitation during examination of ‘742 Application is eliminated in this reissue application that coincidently regards subject matter relied on during prosecution of parent application to obtain the original patent. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. In re Mostafazadeh, 98 USPQ2d 1639 (Fed Cir 2011), In re Youman, 102 USPQ2d 1862 (Fed Cir 2012). Next, there is no narrowing feature added by the preliminary amendments herein that materially narrows relative to the surrender-generating limitation. Specifically, independent claims 1, 6 and 18 (and their associated dependent claims) herein have omitted the above noted surrendered subject matter as recited in issued claims of ’629. While to the extent there is/are added or narrowed element(s) herein that are not present in ‘629 claims, those element(s) is/are not directed to the noted surrendered subject matter. If surrendered subject matter has been entirely eliminated from a claim present in the reissue application, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim. See MPEP 1412.02 (I)(C). Stated another way, if a claim limitation present in the original patent that was added to overcome a rejection or that was argued by applicant to distinguish over the prior art is entirely eliminated from a claim in the reissue application, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim. See Id.
In view of the forgoing, the Applicant has attempted in the June 2025 Amendment herein to improperly recapture subject matter explicitly surrendered during prosecution of the ‘742 Application leading to the ‘629 Patent for reasons stated above.
Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the 11,486,629 patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mark Sager whose telephone number is (571) 272-4454. The examiner can normally be reached M-Th, 6:30 AM - 3 PM, EST.
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/MARK SAGER/Primary Examiner, Art Unit 3992
Conferees:
/JEFFREY D CARLSON/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
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