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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1–11 and 20, in the reply filed on 22 April 2026 is acknowledged.
However, on review, this restriction requirement is withdrawn for lack of a search burden, and all claims will be examined.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the perpendicular sidewall of claims 6 and 7, and modifying at least two of the plurality of defined portions at a time of claim 14 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
In ¶ 24 of the as-field specification, the comma between “defined” and “portion 110” should be struck.
¶¶ 22 and 31 of the as-filed specification each recites “surface 108,” but in ¶¶ 24, 26, 28, and 30, reference character 108 refers to the workpiece or substrate. Appropriate correction is required.
¶ 29 of the as-filed specification should be amended to recite “the benefit of high absorption rates means lower energy transmission.”
¶ 34 of the as-filed specification uses reference character 400 to refer to both the substrate and the surface. Appropriate correction is required.
¶ 34 of the as-filed specification uses reference character 402 to refer to both the advanced material coating and the defined portion. Appropriate correction is required.
Claim Objections
Claims 1–11 and 20 are objected to because of the following informalities:
Claim 1, line 7, should be amended to recite “a plurality of superluminescent diodes.”
Claim 2 recites that “the advanced material comprises a diamond-like coating on a workpiece,” but there is already antecedent basis for a “workpiece,” and the definite article should be used.
Claim 20 recites “a beam having a surface area”
Claims 3–11 are objected to due to dependency upon an objected-to claim.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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), 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), except as otherwise indicated in an Office action.
Comment: Although the “machine to remove the advanced material from the voids by polish” of claim 1 is formulated as a limitation to be interpreted under § 112(f), it is not, since the structure of a polishing machine is sufficient. See MPEP § 2181.I.C.: “Examiners will apply 35 U.S.C. 112(f) to a claim limitation that uses the term ‘means’ or generic placeholder associated with functional language, unless that term is (1) preceded by a structural modifier, defined in the specification as a particular structure or known by one skilled in the art, that denotes the type of structural device (e.g., ‘filters’), or (2) otherwise modified by sufficient structure or material for achieving the claimed function.”
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 1–20 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.
Claims 1 and 12 each provides for “a coating of an advanced material.” The term “advanced material” renders the claims indefinite because its metes and bounds are unclear, as it is a broad term that simply refers to new materials with new characteristics. For purposes of examination, this term will be understood to mean a diamond-like coating. Applicant also mentions that “ceramics, ceramic-like surfaces, and the like” should be considered, but without specific formulations of these, the Office declines to review the claim as if every ceramic, for example, should be considered since there would be so many ceramics that are unambiguously not advanced materials even if the term “advanced materials” is indefinite.
Claim 7 recites “the surface of the advanced material.” While claim 7 has antecedent basis of a surface of a workpiece from claim 1, it does not have antecedent basis for a surface of the advanced material, and the indefinite article should be employed.
Claim 7 recites “the at least one sidewall is substantially perpendicular to the surface of the advanced material.” The term “substantially” is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The terms “high absorption” and “excessive heat generation” in claim 12 are relative terms which renders the claim indefinite. The terms “high” and “excessive” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “significant heat” in claim 20 is a relative term which renders the claim indefinite. The term “significant” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 2–6, 8–11, and 13–19 are rejected due to dependency upon rejected claims.
Claim Rejections — 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1–9, 12, 13, and 17–20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shigeta (WO 2015/045693 A1, cited by Applicant, translation provided by the Office).
Claim 1: Shigeta discloses a system to modify a surface of a workpiece, the system comprising:
a workpiece (12) configured for use in a manufacturing processing chamber (this functional limitation is broad and does not meaningfully limit the claim; see also MPEP § 2173.05(f)) having a coating of an advanced material (DLC coating film 14); and
a surface modification device (16) comprising a photonic radiation source, wherein the photonic radiation source is selected from a group of photonic radiation sources consisting of: a laser (16), a plurality of lasers, a light emitting diode, a plurality of light emitting diodes, a superluminescent diode, a plurality of superluminescent diodes, or a combination thereof;
wherein the surface modification device is configured to direct photonic radiation from the photonic radiation source to a defined portion of the surface of the workpiece, such that the defined portion of the workpiece is modified (depicted in figs. 1(a)–1(c)).
Claim 2: Shigeta discloses that the advanced material comprises a diamond-like coating (14) on a workpiece (12).
Claim 3: Shigeta discloses that the diamond-like coating comprises an amorphous carbon material (diamond-like carbon is inherently amorphous).
Claim 4: Shigeta discloses that the photonic radiation source comprises at least one laser tuned to photodegrade only the defined portion of the surface of the workpiece (evident from figs. 1(a)–1(c)).
Claim 5: Shigeta discloses that the at least one laser photodegrades a plurality of defined portions of the surface of the workpiece (evident from the plurality of modifications of 14 that results in DLC pattern 20 in fig. 1(c)).
Claim 6: Shigeta discloses that the defined portion comprises at least one sidewall and at least a bottom (visible in figs. 1(b) and 1(c)).
Claim 7: Shigeta discloses that the at least one sidewall is perpendicular to a surface of the advanced material (a perpendicular sidewall is clearly show in figs. 1(b) and 1(c)).
Claim 8: Shigeta discloses that the at least one sidewall is substantially perpendicular to the surface of the advanced material (a perpendicular sidewall is clearly show in figs. 1(b) and 1(c)).
Comment: The relative term “substantially” here is understood to mean something like that the perpendicularity may be imperfect.
Claim 9: Shigeta discloses that the defined portion comprises a surface area and a depth (clearly appreciable from 14 and 20 in figs. 1(b) and 1(c)).
Claim 12: Shigeta discloses a method of modify a surface of a workpiece, the method comprising:
providing a workpiece (12) configured for use in a manufacturing processing chamber (this functional limitation is broad and does not meaningfully limit the claim; see also MPEP § 2173.05(f)) having a coating of an advanced material (DLC coating film 14);
directing a beam (16) from a photonic source (a source for pulse laser 16 is necessary and inherent) at a plurality of defined portions of a surface of the advanced material (clearly evident given the plurality of modifications illustrated in figs. 1(a)–1(c)) wherein the beam is tuned to the advanced material such that there is a high absorption of the beam by the advanced material without excessive heat generation (these relative limitations are broad (see also the rejections under § 112(b) above) and not meaningfully limiting such that pulse laser 16 reads on the limitation);
causing the beam to modify the surface of the advanced material by starting and stopping the beam such that the plurality of defined portions have a surface area and a depth (appreciable from the plurality of modifications shown at DLC pattern 20 in fig. 1(c)), wherein the plurality of defined portions become a plurality of modified defined portions (ibid.); and
removing the plurality of modified defined portions from the advanced material (“the DLC coating film 14 becomes the DLC pattern 20 by laser ablation”; although the claimed steps of modifying the surface and removing the modified defined portions may be understood as separate steps, Applicant’s disclosure makes clear that “modification includes ablating or vaporizing the surface material in the defined portion,” and therefore, pulse laser 16 qualifies as performing the claimed removing).
Claim 13: Shigeta discloses that each of the plurality of defined portions are modified individually (this is clearly suggested by fig. 1(b)).
Claim 17: Shigeta discloses that the photonic source is a laser (16).
Claim 18: Shigeta discloses that the laser is an ultraviolet laser (“Next, laser ablation was performed using a nanosecond pulse laser (AVIA355-14-70, manufactured by Coherent) under the following conditions. Wavelength: 355 nm,” where 355 nm is in the ultraviolet range).
Claim 19: Shigeta discloses that the advanced material comprises an amorphous carbon material (diamond-like carbon is inherently amorphous).
Claim 20: Shigeta discloses a photodegradation apparatus to modify the surface of a workpiece (12) having an amorphous carbon material coating (DLC coating film 14) comprising:
a laser (16) tuned such that the laser is configured to direct a beam (16) having a surface area (necessary and inherent to any laser) to a surface of the amorphous carbon material for a period of time such that energy from the beam is absorbed by the amorphous carbon material (it’s abundantly clear that DLC coating film 14 absorbs the beam energy since it does not reflect it) without generating significant heat (this is a broad relative limitation (see also the rejections under § 112(b) above) that is not meaningfully limiting such that pulse laser 16 reads on the limitation), wherein the laser is tuned to break bonds in the amorphous carbon material over the surface area to a depth in a defined portion such that the defined portion is removed from the amorphous carbon material (clearly evident from figs. 1(a)–1(c)).
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.
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.
Claims 10, 14, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Shigeta.
Claim 10: Shigeta is silent regarding that the photodegradation vaporizes the defined portion. Shigeta only consistently speaks of “laser ablation.”
However, before the effective filing date of the claimed invention, one of ordinary skill in the art would have understood that, although vaporization is not necessarily the result of ablation, it is the most common and default mode of laser ablation, and would have found it obvious to conclude that Shigeta’s laser ablation likely operated by vaporization. Furthermore, vaporization seems strongly suggested by fig. 1(b).
Claim 14: Shigeta is silent regarding that the plurality of defined portions are modified at least by two of the plurality of defined portions at a time.
However, before the effective filing date of the claimed invention, one of ordinary skill in the art would have appreciated that an additional pulse laser 16 in Shigeta could be duplicated to provide an additional means to modify the defined portions at the same time, thereby reducing processing time. See also MPEP § 2144.04.VI.B.
Claim 15: Shigeta is silent regarding that removing the plurality of modified defined portions is caused by vaporization of the plurality of modified defined portions by the beam. Shigeta only consistently speaks of “laser ablation.”
However, before the effective filing date of the claimed invention, one of ordinary skill in the art would have understood that, although vaporization is not necessarily the result of ablation, it is the most common and default mode of laser ablation, and would have found it obvious to conclude that Shigeta’s laser ablation likely operated by vaporization. Furthermore, vaporization seems strongly suggested by fig. 1(b).
Allowable Subject Matter
Claims 11 and 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 11 and 16 recite similar limitations. Shigeta does not disclose or render obvious these limitations. Shimodaira et al. (JP 2016-036852 A, cited by Applicant) is likely the most relevant prior art of record for these claims since it discloses laser modification of a diamond-like coating on a workpiece, followed by polishing. However, a close review of the reference fails to find that the laser forms voids in any portion. The dimple disclosed in Shimodaira is not properly considered voids, nor does the polishing in Shimodaira seem to properly remove any modified portions, since instead it simply seems to smooth them. Applicant should keep in mind the Office’s remarks about claim interpretation in the § 112(b) rejection of the claims for the indefiniteness due to the term “advanced materials.”
Kawahara et al. (JP 2018-144056 A, cited by Applicant) is also highly relevant.
Tonomura et al. (US Pub. 2018/0370232) is also cited as relevant prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John J. Norton whose telephone number is (571) 272-5174. The examiner can normally be reached 9:00 AM to 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward (Ned) F. Landrum can be reached at (571) 272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN J NORTON/Primary Examiner, Art Unit 3761
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