Ex Parte 5530582 et al

Board of Patent Appeals and Interferences

Aug 4, 2009

90005220 (B.P.A.I. Aug. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CLARK-MXR, INC.,
Appellant and Patent Owner
____________

Appeal 2009-004632
Reexamination Control 90/005,220
Patent 5,530,582
Technology Center 3600
____________

Decided: August 4, 2009
____________

Before KENNETH W. HAIRSTON, SCOTT R. BOALICK, and KEVIN F.
TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL
CLARK-MXR, INC.1 appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1, 2, 7, 13-18, 24-33, and 39-57. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We heard oral arguments on May 20, 2009, a written transcript of
which is included in the record.
We REVERSE.

1 Clark-MXR, Inc. is the real party in interest and the current owner of the
patent under reexamination.
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STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
by Patrick J. Finnan on January 14, 1999 of United States Patent 5,530,582
issued to William G. Clark on June 25, 1996 based on United States
Application 08/427,060 filed April 24, 1995.
Patentee’s invention relates to an apparatus and method for
amplifying ultrashort light pulses (Spec. Col. 1, ll. 7-18). The apparatus
includes a solid state source of non transform limited ultrashort optical
pulses having a fiber optic gain medium (1), a solid state ultrashort optical
pulse amplifier (7) and a frequency converter (4) disposed between the
source and the amplifier (id. at col. 4, 9-50; Fig. 1).
Claim 1, which we deem to be representative, reads as follows:
1. An apparatus for amplifying ultrashort pulses
of light, comprising:
a solid-state source of ultrashort optical pulses
comprising a fiber optic gain medium and having a
fundamental wavelength of operation in the range of 1-3
microns;
a solid-state ultrashort optical pulse amplifier
having a gain bandwidth that does not overlap the
fundamental wavelength of operation of the solid-state
source of ultrashort optical pulses; and
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a frequency converter disposed between said
solid-state source of ultrashort pulses and said solid-state
ultrashort optical pulse amplifier for converting the
fundamental wavelength light output of the solid state
source of ultrashort optical pulses to a wavelength that
overlaps the gain bandwidth of the solid-state ultrashort
optical pulse amplifier.

The prior art references relied upon by the Examiner in rejecting the
claims are:
Kafka 4,829,529 May 9, 1989

Donald J. Harter et al., Short Pulse Amplification in Tunable Solid State
Materials, SPIE Vol. 1229, Femtosecond to Nanosecond High-Intensity
Lasers and Applications, pp. 19-28, January 17-18, 1990 (‘Harter’).

Dan Botez et al., The Next Generation of High-Power Semiconductor Diode
Lasers, TRW Space and Defense Quest, pp. 21-31, Winter 1991/1992
(‘Botez’).

Irl N. Duling III, Compact Fiber Soliton Lasers Produce Ultrashort Pulses,
Laser Focus World, p. 213, April 1993 (‘Duling’).

Y. Nabekawa et al., Terawatt KrF/Ti:Sapphire Hybrid Laser System, Optics
Lett. Vol. 18, No. 22, pp. 1922-1944, November 15, 1993 (‘Nabekawa’).

K. Tamura et al., Technique for Obtaining High-Energy Ultrashort Pulses
from an Additive-Pulse Mode-Locked Erbium-Doped Fiber Ring Laser,
Optics Lett. Vol. 19, No. 1, pp.46-48, January 1, 1994 (‘Tamura’).

The Examiner rejected claims 1, 2, 7, 14, 16-18, 25, 27-30, 39, 42-48,
51-54, 56, and 57 under 35 U.S.C. § 103(a) as unpatentable over Harter and
Tamura (Ans. 6).
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The Examiner rejected claims 13, 24, 32, 49, and 50 under 35 U.S.C.
§ 103(a) as unpatentable over Harter, Tamura, and Duling (Ans. 8).
The Examiner rejected claims 15, 26, 31, 33, and 55 under 35 U.S.C.
§ 103(a) as unpatentable over Harter, Tamura, Duling, and Nabekawa
(Ans. 9).
The Examiner rejected claim 40 under 35 U.S.C. § 103(a) as
unpatentable over Harter, Tamura, and Boetz (Ans. 9-10).
The Examiner rejected claim 41 under 35 U.S.C. § 103(a) as
unpatentable over Harter, Tamura, and Kafka (Ans. 10).

Appellant relied upon the following in rebuttal to the Examiner’s
rejections:
Declaration under 37 C.F.R. § 1.132 of Philippe Bado filed August 13, 2001
(App. Br.; Evidence Appendix) (“Bado Decl.’).

Declaration under 37 C.F.R. § 1.132 of Erich P. Ippen filed August 13, 2001
(App. Br.; Evidence Appendix) (“Ippen Decl.’).

Declaration under 37 C.F.R. § 1.132 of Frank W. Wise filed September 27,
2002 (App. Br.; Evidence Appendix) (‘Wise Decl.’).

ISSUE
Appellant contends that the Examiner’s rejection is in error because
the subject matters of independent claims 1, 39, and 47 are not rendered
obvious over the combination of Harter and Tamura (App. Br. 4). More
specifically, Appellant argues that it would not have been obvious to
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combine the noted prior art references because “those of ordinary skill in the
art did not know that the non-transform-limited pulses of Tamura could
successfully be frequency doubled and used as a replacement for a mode-
locked color center laser to seed a regenerative amplifier” (App. Br. 6-7). In
addition, Appellant provides arguments traversing the rejections of the
dependent claims (App. Br. 12-14). The Examiner responds that Harter
specifies that the desired properties for the seed laser source are
compactness, stability, high power and solid state, where Tamura’s erbium-
doped fiber laser meets every one of those properties and suggests its laser
can be substituted for a color center laser, thus supporting the combination
of the references (Ans. 17).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the Brief have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issue arising from the respective positions of Appellant and
the Examiner are:
Has Appellant shown reversible error in the Examiner’s determination
that a person having ordinary skill in the art would have been led to
substitute the erbium doped fiber laser of Tamura for the transform limited,
color center laser, whose output is frequency doubled in Harter and used to
seed a regenerative amplifier, in the context of the rejection of independent
claims 1, 39, and 47 under 35 U.S.C. § 103(a)?
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FINDINGS OF FACT
1. The present Specification describes an apparatus and method for
amplifying ultrashort light pulses (Spec. Col. 1, ll. 7-18). The
apparatus includes a solid state source of non transform limited
ultrashort optical pulses having a fiber optic gain medium (1), a
solid state ultrashort optical pulse amplifier (7) and a frequency
converter (4) disposed between the source and the amplifier (id. at
col. 4, 9-50; Fig. 1).
2. Harter discloses processes for amplification of short pulses in
tunable solid state materials (Abs.). Appellant acknowledges that
“Harter shows a transform limited, color center laser that is
frequency doubled to seed a regenerative amplifier” (App. Br. 4).
3. The Examiner found that “Harter teaches all [the] claimed subject
matter with the exception of the use of an erbium doped fiber laser
as a seed beam source,” (Ans. 6), which Appellant does not
contradict (App. Br. 4).
4. Tamura discloses a technique for obtaining high-energy ultrashort
pulses from an additive-pulse mode-locked erbium-doped fiber
ring laser (Abs.).
5. The instant Specification discloses that Tamura’s system
“generates 100 fs duration FWHM at 48.2 MHz” (Spec. Col. 3, ll.
46-47). The Examiner found that Tamura teaches “that an erbium
doped fiber laser was usable as a seed beam source at the time of
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filing of the application,” (Ans. 6), which Appellant does not
contradict (App. Br. 4).
6. Tamura also discloses that “[p]assively mode-locked erbium-doped
fiber lasers have the potential to become compact, stable, and
inexpensive replacements for mode-locked color-center lasers in a
variety of applications” (p. 46, col. 1, ll. 1-4). Appellant
acknowledges that “Tamura discloses a non-transform-limited
fiber laser as a substitute for a color center laser in some
applications” (App. Br. 4).
7. Ippen declares that in December of 1994, “it was not clear that
frequency-doubled, mode-locked fiber lasers could provide the
pulse quality and the pulse energy needed to seed a regenerative
amplifier” (Ippen Decl. 2).
8. Ippen declares that he was one of the co-authors of the paper by
Tamura (Ippen Decl. 1).
9. Ippen also declares that “[t]he statement in the Tamura paper that
fiber lasers could be used in place of a [sic] color center lasers in a
variety of applications was true, but I had not thought of the
possibility of using [a] frequency-doubled pulse from a fiber laser
to seed a regenerative amplifier” (Ippen Decl. 2).
10. Bado declares that he was a co-author of the paper by Harter (Bado
Decl. 1).
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11. Bado also declares that the color-center laser used to seed the
regenerative amplifier in Harter is “essentially transform-limited”
and the fiber laser described in Tamura is “not transform-limited”
(Bado Decl. 2).
12. Bado declares that at the time the application for the instant patent
was filed “it was not obvious to substitute a frequency-doubled,
mode-locked, erbium-doped fiber laser for a frequency-doubled,
mode-locked color center laser” (Bado Decl. 2).
13. Wise declares that based on the disclosure of Harter, that one of
ordinary skill in the art would have been led “to believe that
essentially transform limited pulses were required in Harter’s
application” (Wise Decl. 2, ¶ 7).
14. Wise also declares that Tamura’s comment on uses of erbium-
doped fiber lasers (FF 7) “would have suggested to those skilled in
the art that the laser could be used in applications where time
bandwidth product was not critical” (Wise Decl. 3, ¶ 10).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
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subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 550 U.S. 398 at
419 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents”).
Although there are certain obvious shortcomings in ex
parte affidavits as proof, it seems to us that such affidavits
are clearly one of the few practical methods of presenting
a factual record sufficient to form a basis for proper
application of the ‘history of the art test’ in this type of ex
parte proceeding. . . . Such ex parte affidavits must, of
course, be closely scrutinized and weighed with care, it
being kept in mind that they may unconsciously and
unintentionally be colored as a result of enthusiasm for the
subject matter of the application. We think also that an
affidavit by an applicant or co-applicant as to the
advantages of his invention is less persuasive than one
made by a disinterested person.
In re McKenna, 203 F.2d 717, 720 (CCPA 1953) (citations omitted).

ANALYSIS
Appellant argues that it would not have been obvious to combine the
noted prior art references because “those of ordinary skill in the art did not
know that the non-transform-limited pulses of Tamura could successfully be
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frequency doubled and used as a replacement for a mode-locked color center
laser to seed a regenerative amplifier” (App. Br. 6-7). Based on Appellant’s
arguments and the evidence presented through the declarations, we generally
agree.
The Examiner is correct that Harter specifies that the desired
properties for the seed laser source are compactness, stability, high power
and solid state, where Tamura’s erbium-doped fiber laser meets every one of
those properties. However, we do not find that such desired properties
overcome the weight of the evidence that one of ordinary skill in the art
would not have substituted Tamura’s erbium-doped fiber laser for the color
center laser in Harter (FF 7, 12). It is possible that many types of seed laser
sources could be substituted for the source in Harter, matching the criteria
established by the Examiner, but that does not address any reasonable
expectation of success of such a combination. To the contrary, all of the
submitted Declarations suggest otherwise.
In response to the Wise Declaration, the Examiner argues that Harter
tried a non-transform-limited Dye laser as a seed source, so that Harter does
not require only transform-limited sources (Ans. 25). While the Examiner is
correct that Harter provides no mandatory requirements for the seed laser,
this does not contradict the sentiment that non-transform-limited sources
would not have been viewed to be useful in seeding a regenerative amplifier
(FF 7, 11, 13). The lack of a prohibition in a base reference, without more,
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cannot motivate a combination. We acknowledge that the Examiner finds
such motivation in Tamura.
Tamura suggests that erbium-doped fiber lasers can replace mode-
locked color-center lasers in a variety of applications (FF 6). The Examiner
finds this to be sufficient motivation that Tamura’s laser can be substituted
for a color center laser, thus supporting the combination of the references
(Ans. 17). However, we find compelling the statements provided by the
declarants (FF 9, 12, 14) that the suggestion recited in Tamura must be
tempered by the knowledge and experience of those of ordinary skill in the
art. While Tamura’s statement is certainly broad, it must be viewed from the
standpoint of what it would have suggested to one of ordinary skill in the art.
We agree with the declarants that it would depend on the application of the
color center laser as to whether the fiber laser of Tamura could be
substituted therefor.
In addition, while the Examiner is correct that “[n]o text in the cited
prior art has been presented supporting” the conclusions of the declarants,
that does not mean that their opinions have no persuasive power. We find
their opinions to be helpful, especially for their apparent lack of bias, in
determining whether one of ordinary skill in the art would have combined
Harter and Tamura as suggested. As such, we find that a person having
ordinary skill in the art would not have been led to substitute the erbium
doped fiber laser of Tamura for the transform limited, color center laser,
whose output is frequency doubled in Harter and used to seed a regenerative
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amplifier. Thus, we find that Examiner erred in rejecting independent
claims 1, 39, and 47 under 35 U.S.C. § 103(a) as being obvious over Harter
and Tamura.
In addition, Appellant provides arguments traversing the rejections of
the dependent claims (App. Br. 12-14). We need not reach these arguments
as we find the Examiner erred in rejecting independent claims 1, 39, and 47
as being obvious over Harter and Tamura, and none of the secondary
references, applied against some of those dependent claims, cure the
deficiencies of the combination.

CONCLUSIONS
Appellant has shown that the Examiner reversibly erred in rejecting: i)
1, 2, 7, 14, 16-18, 25, 27-30, 39, 42-48, 51-54, 56, and 57 over Harter and
Tamura, ii) claims 13, 24, 32, 49, and 50 over Harter, Tamura, and Duling,
iii) claims 15, 26, 31, 33, and 55 over Harter, Tamura, Duling, and
Nabekawa, iv) claim 40 over Harter, Tamura, and Boetz, and v) claim 41
over Harter, Tamura, and Kafka.

DECISION
The decision of the Examiner to reject claims 1, 2, 7, 13-18, 24-33,
and 39-57 is REVERSED.

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REVERSED

ack

cc:

STEPHEN B. SALAI, ESP.
HARTER, SECREST & EMERY LLP
1600 BAUSCH & LOMB PLACE
ROCHESTER, NY 14604-2711

THIRD PARTY REQUESTER:
PATRICK J. FINNAN
EPSTEIN, EDELL & RETZER
1901 RESEARCH BOULEVARD, SUITE 400
ROCKVILLE, MD 20850-3164