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 .
Claim Objections
Claims 1 and 2 are objected to. Claim 1 recites “wherein said mirror comprises: a bevel-shaped coating applied to each of a first end and a second end of said mirror, said bevel-shaped coating being configured to resist dust buildup”; similarly claim 2 recites “wherein said mirror said first and second ends comprises: each of a first end and a second end of said mirror are rounded by removing some material, to prevent dust buildup at said first and second ends”. The limitations include intended use statements; it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations [Ex parte Masham, 2 USPQ2d 1647 (1987)]. Furthermore, it has been held that the recitation that an element is "adapted to" perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense [In re Hutchison, 69 USPQ 138].
Applicant is advised that should claim 1 be found allowable, claim 2 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 2 recite the limitation “a mirror, said mirror configured to direct said beam of light to form a spot of light on the target surface; said mirror further configured to scan said beam of laser light to move said spot of light rapidly on the target surface;” which renders the claim indefinite. There is insufficient antecedent basis for these limitations in the claim(s). The use of the phrase “the target surface” is unclear because it does not particularly refer to a previously claimed structure; there was no prior recitation of ‘a target surface’ which clearly points out what is being claimed. Similarly, the use of the phrase “said beam of laser light” is unclear because there is no prior recitation of a ‘beam of laser light’; it is not certain if the limitation is pointing to the ‘beam of light emitted at a first wavelength’ recited earlier in the claim, or to a new and distinct ‘beam of laser light’. Similar consideration is given to the phrase “said scanned spot” recited later in the claim. It is suggested to amend the claim(s) to use consistent language and to particularly point out the subject matter being claimed.
Claim 2 further recites the limitation “wherein said mirror said first and second ends comprises: each of a first end and a second end of said mirror are rounded by removing some material, to prevent dust buildup at said first and second ends” which renders the claim indefinite. The first clause, “wherein said mirror said first and second ends comprises”, is unclear and there is insufficient antecedent basis for the ‘first and second ends’. It is also unclear what ‘material’ is being removed. It is suggested to amend the last limitation of claim 2 to clearly define the mirror. For the purposes of examination the broadest reasonable interpretation of the claim language in view of the instant specification is applied to the limitations. Appropriate correction is required.
Allowable Subject Matter
Claims 1-2 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James F. McDonald III whose telephone number is (571)272-7296. The examiner can normally be reached M-F; 8AM-6PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Koharski can be reached at 5712727230. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES FRANKLIN MCDONALD III
Examiner
Art Unit 3797
/CHRISTOPHER KOHARSKI/Supervisory Patent Examiner, Art Unit 3797
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