Ex Parte Belgum et al

Patent Trial and Appeal Board

Mar 11, 2016

12807345 (P.T.A.B. Mar. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/807,345 09/01/2010
20350 7590 03/15/2016
KILPATRICK TOWNSEND & STOCKTON LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO, CA 94111-3834
JackBelgum
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
9 l 439-000700US-759975 1862
EXAMINER
DEHGHAN, QUEENIE S
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
03/15/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK BELGUM and DALE FLAMING 1
Appeal2014-009355
Application 12/807 ,345
Technology Center 1700
Before BRADLEY R. GARRIS, CHUNG K. PAK, and JEFFREY R.
SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-8 and 14--18. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify Sutter Instrument Company as the real party in interest.
App. Br. 2.
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Application 12/807 ,345
The subject matter involved in this appeal relates to an apparatus for
pulling glass, particularly, pipettes. Spec 1. 2 Appellants direct their
arguments to claims 1, 5, 6, 16 and 17 which are reproduced from the
Claims Appendix of the Appeal Brief as follows:
1. A pipette puller comprising:
a laser for generating a light beam for heating a pipette,
said pipette having an elongate central axis,
an optical system for alternately scanning the laser beam
in a first direction parallel to said central axis and in a second
direction orthogonal to said central axis, whereby said pipette is
heated and softened by said laser beam,
a force-applying mechanism for applying a pulling force
on the softened pipette.
5. The pipette puller of claim 4 further comprising a
position sensor for determining the position of said weight
while the pipette is being pulled.
6. A pipette puUer comprising:
a laser for generating a light beam for heating a pipette,
said pipette having an elongate central axis,
an optical system for alternately scanning the laser beam
in a first direction parallel to said central axis and in a second
direction orthogonal to said central axis, whereby said pipette is
heated and softened by said laser beam,
a force-applying mechanism for applying a pulling force
on the softened pipette,
wherein said optical system is adapted to scan the laser
beam on at least two paths that are parallel to but offset from
said central axis.
2 We cite to the Specification ("Spec.") filed September 1, 2010; Non-Final
Office Action ("Non-Final") dated May 29, 2013; Examiner's Answer
("Ans."); and Appellants' Appeal Brief ("App. Br.") and Reply Brief
("Reply Br.").
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Application 12/807 ,345
16. A pipette puller comprising:
a laser for generating a light beam for heating a pipette,
said pipette having an elongate central axis,
an optical system for alternately scanning the laser beam
in a first direction parallel to said central axis and in a second
direction orthogonal to said central axis to define a rectangular
scan pattern on the pipette, whereby said pipette is heated and
softened by said laser beam,
a force-applying mechanism for applying a pulling force
on the softened pipette, and
a control system coupled to said optical system for
moving the rectangular scan pattern along the length of the
pipette as it is being pulled.
1 7. The pipette puller of claim 16 further comprising a
position sensor for detecting stretching of the softened pipette,
wherein said control system is adapted to use information from
said position to move said rectangular scan pattern along the
axis of the pipette as it is being pulled.
REJECTIONS
The Examiner maintained the following grounds of rejection: 3
I. Claims 1--4, 6-8, 15, 16 and 18 stand rejected under 35 U.S.C.
§ 103 (a) as unpatentable over Admitted Prior Art ("AP A") 4 in view of
Costin (US 6,252, 196 B 1 issued Jun. 26, 2001 ).
II. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
APA, Costin and Suzuki (US 6,425,270 Bl issued Jul. 30, 2002).
3 Ans. 2-5; Non-Final 2---6.
4 The subject matter deemed admitted appears at paragraphs 3 and 25 of
Appellants' Specification. See Ans. 2; App. Br. 6.
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Application 12/807 ,345
III. Claims 14 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over AP A, Costin, Suzuki and Levin (US 6, 144,007 issued
Nov. 7, 2000).
DISCUSSION
I
With regard to Rejection I, Appellants separately argue only
independent claims 1, 6 and 16. App. Br. 5-16. We select each of the
independent claims as representative and decide the propriety of Rejection I
as applied to any dependent claim based solely on the independent claim
from which it depends. See 37 C.F.R. § 41.37(c)(l)(iv). Thus, claims 2--4
and 15 stand or fall with claim 1; claims 7 and 8 stand or fall with claim 6;
and claim 18 stands or falls with claim 16. Id.
Appellants admit to a prior art pipette pulling device in which a high
power laser beam is "directed" onto the central axis of a vertically oriented
giass tube to heat the tube, whiie a weight imposes a puiiing force to stretch
the heated tube. Spec. 1; App. Br. 6. Appellants represent that "it was
believed that the correct approach was to use a purely vertical scan with a
beam center that is aligned as closely as possible to [the] pipette central
axis." Spec. 8; see also App. Br. 6 ("This ... is an important part of the
'admitted prior art' being relied on.").
The Examiner found that Costin teaches selective control over the
direction of a laser using an optical system comprised of two independently
movable mirrors, each connected to a computer controlled galvanometer.
Non-Final 2-3. The Examiner determined that it would have been obvious
to one of ordinary skill in the art to utilize Costin' s optical system in the
AP A to provide the required laser beam direction and alignment
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Application 12/807 ,345
functionalities. Id. at 3 (reasoning that "it would have been obvious ... to
have employed the optical system of Costin with the laser of the [AP A] for
precise control of the laser path, such [as] along a first direction parallel to
the central axis of the pipette as well as in a second direction orthogonal to
the first direction").
Appellants contend that Costin is non-analogous art and therefore was
improperly relied upon in the Examiner's obviousness determination. App.
Br. 10-11. In support of that contention, Appellants argue that Costin is not
reasonably pertinent to the problem faced by the inventors, which Appellants
cast as "precision and predictability in the quality of the resultant pipette."
Id. at 11 (emphasis added).
We decline to define the pertinent problem in such a way that the
problem itself requires that any analogous art must be in the same field of
endeavor, as Appellants' framing of the problem solely with regard to the
production of pipettes wouid do. Rather, we are persuaded by the
Examiner's reasoning that Appellants sought to solve a problem mainly
related to control of the laser path. See Non-Final 3; Ans. 8. That framing
of the problem is echoed by the fact that Appellants' independent claims all
focus on the provision of an optical system for controlling the path of a laser
beam. See App. Br. 19--20. Appellants do not dispute that Costin addresses
the use of an optical system to control the path of a laser relative to a
substrate. Accordingly, we are not persuaded of any reversible error in the
Examiner's reliance on Costin as analogous art in considering the question
of obviousness.
Appellants additionally argue that the Examiner has not articulated a
reason for adapting Costin's optical system to perform the particular
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Application 12/807 ,345
movement recited respectively in each of claims 1, 6 and 16. See App. Br.
13-16; Reply Br. 5-6. We address Appellants' separate arguments
regarding each of those claims in tum.
Claim 1
Appellants contend, correctly, that to meet the claimed invention the
relied upon prior art must reasonably have led one of ordinary skill to
provide an optical system which is "programmed or otherwise able to effect
the movement claimed." App. Br. 9. Regarding claim 1, Appellants argue
that "Costin does not show or suggest a system for alternately scanning a
laser in two orthogonal directions." App. Br. 14. Appellants contend, "there
is no apparent reason for adapting Costin's laser system and applying it to a
pipette puller to thereby scan the laser beam alternately in orthogonal
directions." App. Br. 14. We disagree.
The Examiner reasoned that it would have been obvious to one of
ordinary skin in the art to use Costin's opticai system for the purpose of
performing the laser beam movements of the AP A. See Ans. 3. Appellants
represent those movements as including alignment with the central axis and
scanning along the central axis. Spec. 8. Appellants do not dispute that
alignment to a central axis and scanning along the central axis would involve
orthogonal movements. Neither are we persuaded that achieving the AP A's
alignment with the central axis of a vertically-oriented pipette by
horizontally moving the laser would have involved more than ordinary skill
in the art. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) ("A
person of ordinary skill is also a person of ordinary creativity, not an
automaton."). Thus, we are persuaded that the Examiner provided sufficient
articulated reasoning with some rational underpinning to support the
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determination that it would have been obvious to configure Costin's optical
system to perform the orthogonal beam movements called for in the AP A. 5
We therefore sustain the Examiner's rejection of claim 1.
Claims 6 and 16
Appellants similarly argue that the Examiner has not sufficiently
articulated a reason for adapting Costin' s optical system to perform the
particular movement recited respectively in each of claims 6 and 16. App.
Br. 14--16. We agree.
The Examiner's obviousness determination as to these claims is
premised on what the Examiner characterized as Costin's "capability" to
perform any laser movement due to Costin's independently driven mirrors
and associated computer control. See Ans. 3. However, as the Examiner
acknowledged, Costin's optical system would become capable of performing
a given laser beam movement only after being adapted to do so through
input of appropriate user-seiected operating parameters. See Ans. 3 (finding
that Costin teaches that a laser scan can follow "any desired path" in
response to input of "user parameters"). Appellants persuade us that the
Examiner has not articulated a reason as to why one of ordinary skill in the
art would have adapted Costin's optical system, through user input or
otherwise, to render it capable of scanning the AP A laser either parallel to
but offset from a pipette's central axis, as recited in claim 6, or in an axially
moving rectangular scan pattern, as recited in claim 16. See App. Br. 14
("Nothing in the prior art teaches or suggests heating by scanning the laser
5 Appellants do not dispute the Examiner's finding that Costin's optical
system can be configured to scan the laser beam "on any desired path."
Compare Non-Final 3 with App. Br. 5-17.
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off-center."); Id. at 15 ("None of the prior art of record ... discloses ...
moving a rectangular scan pattern along the length of a pipette.").
For these reasons, we do not sustain the Examiner's rejection of either
claim 6 or claim 16.
II
In rejecting Appellants' claim 5 in Rejection II, the Examiner further
relied on Suzuki as evidence in support of the determination that it would
have been obvious to one of ordinary skill to provide the AP A with a weight
position sensor, so as to achieve a feedback process control parameter
associated with the stretching of a given pipette. Ans. 4. Appellants argue
that Suzuki's sensor is not a "position sensor" because it only detects when a
tube begins to stretch, not the position of the tube as it is stretched. App. Br.
16. Appellants' argument lacks persuasive merit. Irrespective of whether
Suzuki's sensor detects position of a stretching tube or merely the condition
of being stretched, we agree with the Examiner's finding that Suzuki teaches
the use of a sensor to indicate stretching of a tube so as to permit feedback
control of the stretching apparatus. Appellants do not point to any reversible
error in the Examiner's determination that, armed with that conceptual
teaching from Suzuki, it would have been obvious to detect positional
movement of the weight in the AP A to achieve the same benefit of
permitting feedback control of the stretching apparatus responsive to the
stretching process. Thus, we sustain the Examiner's rejection of claim 5.
III
With regard to the Examiner's rejection of claims 14 and 17 in
Rejection III, Appellants argue only claim 17. See App. Br. 17.
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Application 12/807 ,345
Because Appellants present no argument specifically directed to claim
14, we sustain the Examiner's rejection of that claim.
Claim 17 depends from independent claim 16. Thus, we do not
sustain the rejection of claim 17 for the reasons set forth above in connection
with claim 16.
SUMMARY
We sustain the rejection of claims 1--4 and 15 under 35 U.S.C.
§ 103(a) as unpatentable over the APA and Costin.
We sustain the rejection of claim 5 under 35 U.S.C. § 103(a) as
unpatentable over the AP A, Costin and Suzuki.
We sustain the rejection of claim 14 under 35 U.S.C. § 103(a) as
unpatentable over the AP A, Costin, Suzuki and Levin.
We do not sustain the rejection of any of claims 6-8 and 16-18.
DECISION
The Examiner's decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended 35 C.F.R. § 1.136.
AFFIRMED-IN-PART
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