Ex Parte Anantharaman

Board of Patent Appeals and Interferences

Mar 7, 2011

11211021 (B.P.A.I. Mar. 7, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SATISH ANANTHARAMAN
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Appeal 2010-001852
Application 11/211,021
Technology Center 1700
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Before BRADLEY R. GARRIS, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-001852
Application 11/211,021

A. Introduction2
Satish Anantharaman (“Anantharaman”) timely appeals under
35 U.S.C. § 134(a) from the final rejection3 of claims 1-11 and 21, which are
all of the pending claims. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
The subject matter on appeal relates to a transmissive laser welding
system in which two pieces of different thermoplastics are placed in contact
with one another and exposed to the laser radiation. The directly exposed
piece transmits the laser radiation, while the other piece absorbs the
radiation and is heated to a melt, whereupon the first piece is welded to the
second. Such welding techniques are said to be especially useful for
producing plastic battery modules that are placed in harsh and “physically
unstable environments” such as hybrid vehicles. (Spec. 1 [0002].)
According to the 021 Specification, the invention provides an efficient way
to monitor the quality of the welds that avoids time-consuming and
expensive manual inspection of each weld. In the claimed “system,” the
thermal images of the solidified but not completely cooled welds are
compared to a reference, or “template” thermal image of a proper weld. In
some embodiments, the pieces to be welded may be held on a turntable
which positions the work-pieces in the laser welding station and in the

2 Application 11/211,021, Infra-Red Thermal Imaging of Laser Welded
Battery Module Enclosure Components, filed 24 August 2005. The
specification is referred to as the “021 Specification,” and is cited as “Spec.”
The real party in interest is listed as Cobasys, LLC. (Appeal Brief,
filed 17 August 2009 (“Br.”), 3.)
3 Office action mailed 17 March 2009.
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thermal imaging station. In certain preferred embodiments, the welding and
imaging stations are in different places.
Representative Claims 1 and 3 read (bracketed labels refer to elements
shown in Figure 1, which is reproduced on the following page):
1. A thermal imaging system [10] for a battery module
enclosure [12] that includes first and second battery module
enclosure components between which a weld is formed,
comprising:
a thermal imaging camera [16] that focuses on the first
and second battery module enclosure components within
a predetermined amount of time after the weld is formed
and that acquires a thermal signature; and
a control module [20] that includes:
an image processing module [32] that receives said
thermal signature and that locates a predetermined
reference point in said thermal signature; and
an image comparison module [36] that receives
said thermal signature and that uses said
predetermined reference point to compare said
thermal signature to a template signature in order
to verify structural integrity of the weld.
(Claims App., Br. 24; indentation, paragraphing, bracketed labels, and
emphasis added.)
3. The thermal imaging system of Claim 1 wherein said
image processing module utilizes an image processing
algorithm that locates a structural feature that is common to
both of said thermal and template signatures.
(Claims App., Br. 24.)
Claim 6 depends from claim 1 and adds the further limitation that the
imaging system comprises a welding laser and a turntable that supports the
components to be welded and that arranges the components to be in the path
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of the laser beam and within the field of view of the thermal imaging camera
for data acquisition. Claim 21 depends from claim 6 and requires further
that the laser welding and the thermal imaging occur at different positions.
An embodiment of the invention within the scope of claim 21 is
depicted in Figure 1 of the 021 Specification, which is reproduced below:

{Figure 1 shows a schematic of a thermal imaging laser welding system}
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The Examiner has maintained the following grounds of rejection:4
A. Claims 1-5, 7, and 10 stand rejected under 35 U.S.C. §§ 102(a)
and (e) in view of Murray.5
B. Claims 1-5 and 7-10 stand rejected under 35 U.S.C. § 102(b) in
view of Black.6
C. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Murray and Black.
D. Claims 6, 11, and 21 stand rejected under 35 U.S.C. § 103(a) in
view of the teachings of either Murray or Black combined with
those of either Wiler7 or Oyama.8
According to Anantharaman, neither Murray nor Black describes a
system in which a thermal imaging camera is focused on the components at
a predetermined time after the weld is formed. (Br. 11, 1st & 2d paras; and
at 16, 2d para, respectively.) Moreover, in Anantharaman’s view, neither
reference describes the processing of the images and the comparison of the
thermal signature of the weld at a predetermined reference point with a
template thermal signature as required by claim 1. (Br. 13, 1st para. and

4 Examiner’s Answer mailed 28 October 2009 (“Ans.”).
5 Neil G. Murray Jr. and Douglas W. Benefiel, Method for Monitoring
Quality of a Transmissive Laser Weld, U.S. Patent Application Publication
2005/0169346 A1 (4 August 2005), based on an application filed 29 January
2004.
6 Michael Black and Vladimir Kupershmidt, Mirror-based Laser-
Processing System with Visual Tracking and Position Control of a Moving
Laser Spot, U.S. Patent 5,382,770 (1995).
7 Donna M. Wiler et al., Method and Apparatus for Ablative Processing of
Elastomeric Products, U.S. Patent 5,478,426 (1995).
8 Masamichi Oyama and Takehiko Itoh, Tire Marking System, U.S. Patent
Application Publication 2004/0134983 A1 (15 July 2004), filed 7 January
2004.
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at 17, 2d and 3d paras.) Anantharaman argues further that neither reference
describes an image processing algorithm that locates a structural feature
common to the detected thermal signature and the template signature as
required by claim 3. (Br. 13-14, and at 18, respectively.) Anantharaman
does not raise distinct arguments for patentabilty of any of the remaining
claims, except for claim 21, which we discuss separately infra.9
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The Examiner argues that the claims are drawn to an apparatus that
“must be capable of performing the recited manner.” (Br. 10, 2d full para.)
Appellants appear to agree that the claims are drawn to an apparatus, and
that the process limitations are functions that the claimed apparatus must
have structures that perform those functions. (Reply 8.)
Review of the 021 Specification confirms that the words used in the
claim are generally consistent with their use in ordinary parlance. Thus,
the 021 Specification explains that “the term module refers to . . . suitable
components that provide the described functionality.” (Id. at 5 [0019].) The

9 We note that Anantharaman “reserves the right to address these other
reasons at a later date if needed” for the patentability of claims 8 and 9 and
of claims 6 and 11. (Br. 19.) Such arguments may indeed be raised in
further prosecution in an appropriate continuing-examination or -application
before the Examiner. However, under the Regulations governing appeals,
any argument not timely made has been waived in this appeal.
37 C.F.R. § 41.37(c)(1)(vii), 2d sentence.
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discussion of welding and monitoring welds, e.g., paragraphs [0022]
through [0025], indicates that a “weld is formed” after the melt pool10
solidifies. The 021 Specification explains that, due to the low thermal
conductivity of thermoplastics, “the weld temperatures of the plastic
enclosure components 1211 remain consistent for a period of time.”
(Spec. 7 [0022].) Thus, claim 1 requires that the thermal imaging camera
“acquire a thermal signature” of a solidified weld, and that this be done
“within a predetermined period of time” after the weld has solidified. In
practice, a thermal image that is to be compared with a finished weld cannot
be acquired too soon after the laser irradiation is complete, because the melt
pool will not have solidified and the weld will not be formed; nor can the
thermal image be acquired too long after irradiation is complete, because the
weld will be cold, and relevant information will not be collected.
The 021 Specification explains further that “[t]he template signature
includes one or more reference points that correspond with structure that is
common to both the template signature and other potential thermal
signatures.” (Id. at [0023].) In other words, portions of the newly-formed
weld must be compared to the corresponding portions of the template weld.
Murray describes a transmissive welding apparatus that welds
transparent upper plastic piece 12 to absorptive lower plastic piece 10 via

10 We understand the melt pool to be the plastic, of either layer or of both
layers, that melts in response to the heating of the underlying plastic layer
that absorbs the laser radiation. See, e.g., 021 Specification Fig. 2c,
element 56, a lens-shaped melt pool at the interface of the two plastic layers.
11 For clarity, labels are presented in bold font throughout this Opinion
regardless of the presentation in the original document.
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laser 40, which is used to form melt-pool 60 at the interface of the two
plastic pieces. According to Murray, process control feedback is provided
via an I-R camera 70, an image controller 74, and a weld controller 46,
which controls the laser 40 and a mirror adjustment device 44 that directs the
laser beam to the work piece. Murray teaches that the controllers are
preferably a microcomputer. (Murray 3 [0027].)
Murray Figure 1, shown below, illustrates the welding apparatus.

{Murray Figure 1 is a diagram of a monitored and controlled
transmissive laser welding apparatus}
Figures 3A and 3B, reproduced on the following page, show a flow
chart of the controlled welding process described by Murray.12 Briefly, after
the welding process has begun, I-R camera 70 is actuated and an image of

12 In the text, decision points or steps in the flow chart are indicated by curly
braces, while paragraphs in Murray are indicated by square brackets.
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the field of view 84, delimited by dashed lines 82, is obtained {310} at a
time {312} set by the image controller 74. . (Murray 3 [0028].) Image
controller 74 “analyzes the color of each pixel of the received image to
determine the temperature associated with the pixel,” and then “compares
the determined temperatures of the pixels associated with the weld pool 60
to a threshold temperature range to determine whether the determined
temperatures are within the threshold temperature range.” (Id. at [0032];
{314}-{316}.) Temperature errors {318} and voids in the nascent
weld {322} can be detected and corrected via feedback or by alerting the
operator {320} following path C. The process is cyclic, following paths B
and D, continuing laser heating and thermal image monitoring until a
predetermined temperature condition is met {326}. When that temperature
is met, the extent of the melt pool is checked {328}-{330} and one more
cycle along path D is performed. On the next pass, at {334},
“a determination is made as to whether the weld pool 60 temperature is
below a temperature at which the weld pool 60 hardens to form the
weld 56.” (Id. at 5 [0044]) Following path A, thermal images of the weld
pool 60 are collected, analyzed, and compared to the completed weld until
the weld conditions are met, at which time the process ends. (Id.; {336}.)
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{Murray Figures 3A and 3B are shown below:}

{Figures 3A and 3B show a flow chart of the welding method}
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Anantharaman’s criticisms of Murray are not supported by credible
evidence of record. First, Murray teaches that during the laser treatment, the
thermal image contains the weld pool “in its entirety,” and the controller can
“determine whether any portion of the weld pool 60 is at a temperature
outside of the threshold range, whether too low or too high.”
(Murray 3 [0032].) Because flow path A, which monitors the cooling melt
pool, is the same as the path for monitoring the development of the melt, it is
reasonable to conclude that the same analysis is performed on the cooling
melt pool 60 and thus on the nascent weld 56 (described in
paragraph [0044], to which Anantharaman directs our attention (Br. 11,
2d. para.).) The determination of the temperature of pixels associated with
the weld pool and the comparison with appropriate reference temperatures
indicate that the image processing module and the image comparison
modules recited in claim 1 are fully met. Murray’s description is consistent
with the Examiner’s finding that a thermal signature of the weld is compared
to a template signature at a predetermined reference point. Such a
comparison would verify structural integrity,13 as required by claim 1.
The time spent in loop A waiting for the weld pool to solidify meets
the “predetermined amount of time after the weld is formed” for acquisition
of a thermal image of the formed weld. Claim 1, which uses the “open”
transitional phrase “comprising,” does not , of course, exclude the
acquisition of intervening thermal images. Moreover, as emphasized by
error correction loop C, the apparatus and process described by Murray are

13 The lack of structural integrity, e.g., voids, would be detected at {322}
and compensated for at {320}.
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intended to be used to reproduce many copies of the same welded structures.
When substantially identical parts are welded together under substantially
identical conditions, it is to be expected that substantially the same amount
of time will be required for the melt pool to solidify. That time is the
“predetermined time” recited in claim 1.
Regarding claim 3, the weld 56 corresponds to the “common
structural feature.” Image processor 74, which is preferably a
microcomputer, must use an image processing algorithm that locates the
weld in the thermally imaged work piece and compares its properties to the
template weld thermal signature. Thus, at step {334}, image controller 74
uses an image processing algorithm to locate a structural feature common to
the thermal and template signatures as required by claim 3.
We conclude that Anantharaman has not shown harmful error in the
Examiner’s finding that Murray anticipates claim 1. All remaining claims
except claim 21, which has been argued separately, thus fall with claim 1.
As for claim 21, the Examiner relies on Wiler for teachings of moving
an article mounted on a turntable under a laser beam instead of moving the
laser beam over the article. (Ans. 9.) The Examiner does not explain,
however, how this teaching of moving the article rather than the laser beam
would have led a person having ordinary skill in the art to provide a separate
monitoring station for the thermal imaging provided by Murray. Similarly,
the Examiner relies on Oyama for teachings of a tire marking system in
which a camera 7 and a laser source 9, at different positions, are positioned
over a tire mounted on a turntable. (Id.) The Examiner does not explain
how a camera that reads a bar code that is associated with instructions for
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what the laser is to write on the tire would have suggested modifying the
apparatus described by Murray to set up a separate station for monitoring the
laser welding. Although the Examiner argues that these references show
that the turntable in either secondary reference would have been capable of
moving the work piece from the laser heating station to the thermal imaging
station, mere capability, although a prerequisite for obviousness is not a
proxy for obviousness.
Accordingly, we REVERSE the rejection of claim 21 as obvious in
view of the combined teachings of Murray and either Wiler or Oyama.
In the rejections over Black, the Examiner relies on alleged
capabilities of the disclosed apparatus to perform the recited functions.
According to Anantharaman, “Black teaches that processing is conducted
only on areas currently being welded” (Br. 17, 3d para.), and that “this is a
teaching away from processing thermal signatures acquired after a weld is
formed.” “Teaching away” is primarily an argument that a reference is not
suitable for an obviousness rejection, and has no weight against a rejection
for anticipation when the structures of the reference perform the functions
required by the claims. But we note that Black teaches that “[t]he system
can be used most efficiently for treating an object of irregular shape in
individual and small-batch production where the use of programmed
universal machines is economically unjustifiable and where the laser spot
should be guided along a required path manually.” (Black, col. 5, ll. 33-38.)
Thus, unlike the detailed and highly automated controllers for the apparatus
described by Murray, the controllers described by Black are designed to
assist the operator to control the joystick that enables the positioning of the
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welding spot. The Examiner has not directed our attention to structures in
Black that are disclosed to perform functions corresponding to those recited
in claim 1 for the image processing module and the image comparison
module. As Anantharaman argues, there are no teachings that the entire
welding process is monitored and controlled. To be anticipatory, a reference
must describe, either expressly or inherently, each and every claim
limitation, arranged or combined as required by the claimed invention. In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). It is not sufficient, to
establish anticipation, that an apparatus might be adapted to perform the
recited functions.
We conclude that the Examiner erred in finding that Black anticipates
claim 1. The rejections for obviousness that rely on Black as the primary
reference do not cure the fundamental defects of Black, and thus those
rejections must also be reversed.
C. Order
We AFFIRM the rejection of claims 1-5, 7, and 10 under
35 U.S.C. § 102(a) and (e) in view of Murray.
We AFFIRM the rejection of claims 8 and 9 under 35 U.S.C. § 103(a)
in view of the combined teachings of Murray and Black.
We AFFIRM the rejection of claims 6 and 11 under
35 U.S.C. § 103(a) in view of the combined teachings of Murray and either
Wiler or Oyama.
We REVERSE the rejection of claims 1-5 and 7-10 under
35 U.S.C. § 102(b) in view of Black.
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We REVERSE the rejection of claims 6 and 11 under
35 U.S.C. § 103(a) in view of the combined teachings of Black and either
Wiler or Oyama.
We REVERSE the rejection of claim 21 under 35 U.S.C. § 103(a) in
view of the combined teachings of either Murray or Black, and either Wiler
or Oyama.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
tc

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