Ex Parte Belgum et alDownload PDFPatent Trial and Appeal BoardMar 11, 201612807345 (P.T.A.B. Mar. 11, 2016) Copy Citation 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. Appeal2014-009355 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."). 2 Appeal2014-009355 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. 3 Appeal2014-009355 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 4 Appeal2014-009355 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 5 Appeal2014-009355 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 6 Appeal2014-009355 Application 12/807 ,345 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. 7 Appeal2014-009355 Application 12/807 ,345 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. 8 Appeal2014-009355 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 9 Copy with citationCopy as parenthetical citation